Patent Reform: FIRST TO FILE LAW OR FIRST INVENTOR TO FILE LAW
Replacing the Current “First to Invent” System
The Leahy-Smith America Invents Act of 2011 (“AIA”) was signed into law by President Obamaon September 16, 2011. The first significant overhaul of the U.S. patent system in nearly 60years, this new patent reform measure ushers in considerable changes in how companies andindividuals may obtain and enforce patents in the United States. The act became law as of September 16, 2011 and was implemented on September 26, 2011.
This article describes the upcoming change to a FIRST TO FILE law OR FIRST INVENTOR TO FILElaw regime.
One of the most significant effects of the AIA is that the U.S. will convert from a “first to invent”system to FIRST TO FILE law OR FIRST INVENTOR TO FILElaw regime. The provisions of the AIA relating to FIRST TO FILE law OR FIRST INVENTOR TO FILElaw are set forth in Section 3. And while these provisions do not take effect until 18 months from thedate of enactment, i.e., March 16, 2013, they are worth considering in advance of that date asthey may impact your patenting and disclosure strategy in the months leading up to the switch.For example, although the FIRST TO FILE law OR FIRST INVENTOR TO FILElaw provisions of Section 3 go into effect in 2013,the new provisions will only apply to applications (and patents issuing therefrom) that contain (orcontained) claims having an “effective filing date” (discussed below) on or after March 16, 2013,meaning that some (or many) post March 16, 2013 applications and patents will be scrutinizedunder the first to invent rules for many years to come because of the FIRST TO FILE law OR FIRST INVENTOR TO FILE law.
Section 3(a) amends definitions relating to inventorship in 35 U.S.C. § 100. The “inventor” isdefined in new § 100(f) as “the individual, or if a joint invention, the individuals collectively whoinvented or discovered the subject matter of the invention.” A “joint inventor” is defined as “any 1of the individuals who invented or discovered the subject matter of a joint invention” (§ 100(g)).This section defines a “joint research agreement” along current lines (§ 100(h)). Importantly forthe FIRST TO FILE law OR FIRST INVENTOR TO FILElaw regime, Section 3(a) of the AIA defines the “effective filing date” eitheras the actual filing date of the patent or application containing a claim to the invention (§100(i)(1)(A)) or “the filing date of the earliest application for which the patent or application isentitled” under §§ 119, 365(a), 365(b), 120, 121, or 365(c) (§ 100(i)(1)(B)). Finally, this sectiondefines the “claimed invention” as “the subject matter defined by a claim in a patent or anapplication” (§ 100(j)). The FIRST TO FILE law OR FIRST INVENTOR TO FILE law goes on to say:
Section 3(b) effects the changes in 35 U.S.C. § 102 that convert U.S. patent law from “first toinvent”to FIRST TO FILE law OR FIRST INVENTOR TO FILE law. Instead of subsections § 102(a) through § 102(g), new § 102(a)provides that:
FIRST TO FILE LAW OR FIRST INVENTOR TO FILE LAW SAYS
A PERSON SHALL BE ENTITLED TO A PATENT UNLESS:
(1) the claimed invention was patented, described in a printed publication, or in publicuse, on sale, or otherwise available to the public before the effective filing date of theclaimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in anapplication for patent published or deemed published under section 122(b), in which thepatent or application, as the case may be, names another inventor and was effectivelyfiled before the effective filing date of the claimed invention.
These provisions eliminate the distinction for public use, on sale, or “otherwise available to thepublic” between acts occurring in the U.S. (“in this country”) and acts occurring abroad (“in thisor a foreign country”) that have long been a feature of defining prior art under § 102; this effectis made explicit in Section 3(d), which repeals 35 U.S.C. § 104. New § 102(a)(2) expresslydefines the FIRST TO FILE law OR FIRST INVENTOR TO FILElaw aspects of the change, by defining as prior art an earlier-filedpatent or application that “names another inventor”; a definition of “another inventor” is notprovided in the AIA, but it seems likely that this term will be interpreted to mean another“inventive entity,” i.e., any difference in named joint inventors. Section 3(d) of the new statutealso expands the scope of foreign-filed applications as prior art: instead of being limited as priorart to their U.S. filing date (or, in the case of a PCT application, the International Filing Date), thenew FIRST TO FILE law OR FIRST INVENTOR TO FILElaw gives foreign patents and applications the benefit of their earliest effective filing date,which would be the foreign filing date for such applications.The grace period that remains under the AIA is contained in new § 102(b), which providesexceptions to the FIRST TO FILE law OR FIRST INVENTOR TO FILElaw to include:
FIRST TO FILE LAW OR FIRST INVENTOR TO FILE LAW ALSO SAYS
DISCLOSURES MADE 1 YEAR OR LESS
BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION:
A disclosure made 1 year or less before the effectivefiling date of a claimed invention
shall not be prior art to the claimed invention undersubsection (a)(1) if:
(A) the disclosure was made by the inventor or joint inventor or by another whoobtained the subject matter disclosed directly or indirectly from the inventor or ajoint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publiclydisclosed by the inventor or a joint inventor or another who obtained the subjectmatter disclosed directly or indirectly from the inventor or a joint inventor.
THE FIRST TO FILE LAW OR FIRST INVENTOR TO FILE LAW GOES ON TO SAY
DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS:
A disclosureshall not be prior art to a claimed invention under subsection (a)(2) if:
- the subject matter disclosed was obtained directly or indirectly from theinventor or a joint inventor;the subject matter disclosed had, before such subject matter was effectivelyfiled under subsection (a)(2), been publicly disclosed by the inventor or a jointinventor or another who obtained the subject matter disclosed directly orindirectly from the inventor or a joint inventor; or
- the subject matter disclosed and the claimed invention, not later than theeffective filing date of the claimed invention, were owned by the same person orsubject to an obligation of assignment to the same person.
New § 102(b)(1)(A) FIRST TO FILE law OR FIRST INVENTOR TO FILElaw establishes the one-year grace period for the inventor’s own disclosure ordisclosure by another who derived the invention (“obtained directly or indirectly”) from the “true”inventor. New § 102(b)(1)(B), on the other hand, relates to a “second” disclosure of the subjectmatter that had previously been disclosed (“before such disclosure [had] been publiclydisclosed”) by the inventor or “another” who derived (“directly or indirectly”) the invention fromthe inventor, also presumably less than one year prior to the effective filing date. Thus, this newFIRST TO FILE law OR FIRST INVENTOR TO FILElaw provision provides that the “true” inventor’s public disclosure “immunizes” the inventor fromdisclosure by another, presumably provided that the “true” inventor files a patent applicationwithin one year of her initial disclosure (i.e., within the grace period).
New § 102(b)(2) FIRST TO FILE law OR FIRST INVENTOR TO FILElaw disqualifies as prior art disclosure in a patent or patent application by anotherwho “obtained [the subject matter] directly or indirectly from the inventor” (§ 102(b)(2)(A)) orwherein the subject matter had been publicly disclosed by the inventor or another who derivedthe invention from the inventor prior to the effective filing date of the earlier patent or application(§ 102(b)(2)(B)) or there was joint ownership (“not later than the effective filing date of theclaimed invention”) of the earlier disclosed subject matter and the claimed invention. With the FIRST TO FILE law OR FIRST INVENTOR TO FILElaw theseprovisions provide an incentive for early disclosure of inventions within the one-year graceperiod, because the effect of earlier disclosure is to eliminate as prior art any disclosure orpatent or patent application that occurs after the first public disclosure by the inventor, providedthe inventor files a patent application on the subject matter within the one-year grace period with the FIRST TO FILE law OR FIRST INVENTOR TO FILE law.
However, experience with the current law has established that such a disclosure must be anenabling disclosure, and that prior disclosure could create the possibility (if not the likelihood)that variations (obvious or otherwise) could be created and filed by “another,” resulting in adiminution of the “true” inventor’s patent rights through the FIRST TO FILE law OR FIRSTINVENTOR TO FILE law.
New § 102 also defines common ownership under a joint research agreement (new § 102(c),which seems to broaden the protections thereof from obviousness, as is currently the caseunder § 103, to novelty). Moreover, new § 102 expressly states Congress’ intent for “continuity”of the treatment of joint research agreements under the new law and the create Act (new §102(d)) is a part of the FIRST TO FILE law OR FIRST INVENTOR TO FILE law.
Section 3(c) amends current 35 U.S.C. § 103, whichrepeals §§ 103(b) and (c):A patent for a claimed invention may not be obtained, notwithstanding that the claimedinvention is not identically disclosed as set forth in section 102, if the differencesbetween the claimed invention and the prior art are such that the claimed invention as awhole would have been obvious before the effective filing date of the claimed inventionto a person having ordinary skill in the art to which the claimed invention pertains.According to the FIRST TO FILE law OR FIRST INVENTOR TO FILE law patentability shall not be negated by the manner in which the invention was made.
Section 3(e) repeals statutory invention registrations, and §§ 3(f) and 3(g) are “conforming”amendments (§ 3(f) amends Section 120 to change “which is filed by an inventor or inventorsnamed” to “which names an inventor or joint inventor”; § 3(g) amends a number of sections of35 U.S.C. to bring the language of those sections in line with the amendments to §§ 100, 102,and 103). This is the FIRST TO FILE law OR FIRST INVENTOR TO FILE law.
Sections 3(h) and (i) relate to “derived patents” and “derivation proceedings” in the Office thatwill supplant the current interference practice.
Section 3(k) introduces a 10-year “statute of limitations” into 35 U.S.C. § 32 regardingdisciplinary proceedings before the Office and a biennial description of incidents that werebarred from being brought under this section by the statute of limitations and is a large part of the FIRST TO FILE law OR FIRST INVENTOR TO FILE law.
Section 3(l) relates to a small business study to determine the effects of the change to FIRST TO FILE law OR FIRST INVENTOR TO FILElaw on “small business concerns,” with a Report to be provided to Congress not laterthan one year after the Act is enacted. Similarly, Section 3(m) provides for a Report to Congresson prior user rights in the U.S. and abroad in Europe, Japan, Canada, and Australia and theireffects “if any on small businesses, universities and individual inventors.”
Finally, Sections 3(o) and 3(p) express the “Sense of Congress” that the changes effected bythese provisions of the Act “will promote the progress of science and the useful arts” and will“promote harmonization of the United States patent system with patent systems” in the rest ofthe world and “promote greater international uniformity and certainty” in patenting with the new FIRST TO FILE law OR FIRST INVENTOR TO FILE law.
The new FIRST TO FILE law OR FIRST INVENTOR TO FILE law will be looked at for a few years and will be repealed numerous times until a new version of the FIRST TO FILE law OR FIRST INVENTOR TO FILE law is revealed.
The Mars Rising Network will always be updating information as to the FIRST TO FILE law OR FIRST INVENTOR TO FILE law as it progresses.
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