On Your Mark, Get Set, Go! The Race to the Patent Office Is On

March 19, 2013

Last Friday marked the commencement of a new era in United States patent prosecution, as the country moves from a “first-to-invent” system to a “first-to-file” regime.  Whereas the U.S. had always granted patents to the true first inventor(s) of a method or machine, the rest of the world awards the limited monopoly to those who are first to file applications with the countries’ patent offices.  And so, in recognition of the increasingly global nature of innovation and commensurate need for greater uniformity among national patent laws, Congress passed the Leahy-Smith America Invents Act (Pub. L. No. 112-29).

Although President Obama signed the Act into law way back in September 2011, Section Three of the Act—which comprises the first-to-file overhaul—by its terms does not take effect until March 16, 2013.  The eighteen-month delay allowed the U.S. Patent & Trademark Office to adopt rules and regulations to implement the law.

Key to understanding the first-to-file scheme is the concept of “effective filing date,” which Section Two of the America Invents Act defines as:

[T]he actual filing date of the patent or the application for the patent containing a claim to the invention; or . . . the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority . . . or to the benefit of an earlier filing date. . . .

The date of invention is no longer relevant; all that signifies is the effective filing date, as demonstrated by Section Three of the Act, which amends Title 35, Section 102(a) of the U.S. Code to read:

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

35 U.S.C. § 102(a) (emphasis added).

While shifting importance from the date of invention to the date of filing, the Act does, however, provide several exceptions, to be codified in 35 U.S.C. § 102(b).  Most notable is the one-year grace period proscribing an inventor’s disclosure prior to filing an application to be considered prior art to the claimed invention so long as the disclosure was made not more than one year before the effective filing date.  This grace period prevents the U.S. from practicing a true first-to-file system like other countries.  And, thus, inventors should not rely on the one-year grace period if they will be seeking foreign as well as U.S. protection—because the pre-filing disclosure will absolutely bar patent protection in foreign countries.  Consider filing a provisional application, at the very least, before such a disclosure to maintain the ability to pursue a foreign patent.

 

RESEARCH REFERENCES:

To review all sections of the U.S. Code and Code of Federal Regulations that have been affected by the America Invents Act, try running the following query, which searches the Credits and Historical Notes fields of those content sets for the Public Law number:

QueryCR,HN(112-29)

Content: Statutes, Regulations

Jurisdiction: All Federal

Additionally, I have put together a general query to search for the Act by any of its names, in the alternative:

Query: “america invents act” leahy-smith (P.L. Pub.L. (P. Pub. Public +2 Law L.) +2 112-29)

You could run this query, for instance, in the Proposed & Adopted Regulations content area, and search within for DA(aft 09/15/2011).  Sort by date to retrieve the U.S. Patent & Trademark Office’s examination guidelines (78 Fed. Reg. 11059-01) and final rules relating to the Act’s implementation (see, e.g., 78 Fed. Reg. 11024-01, which explains how the Patent Office will treat nonprovisional applications filed on or after March 16, 2013, but claiming priority to an earlier application filed under the first-to-invent regime).