The America Invents Act (Patent Act) transitions the United States from a first to invent system to a first to file system. Under the new first to file system, the general rule to obtain a patent on an invention is that absolute novelty is required and the first inventor to file or win the race to the Patent Office will be awarded the patent.
There are two exceptions to the general rule. The first exception is that the inventor’s own disclosures or disclosures by third parties that were derived from the inventor cannot be used against the inventor. The second exception is that an earlier public disclosure of the inventor can be used to overcome an earlier prior art reference. These exceptions apply to potential prior art references dated within one year of the filing of the patent application.
The expectation is that various concepts relating to the current U.S. patent law concepts (such as swearing behind) will flow through to the Patent Act. For example, to fall under the second exception, the inventor will have to prove through documentation that he/she made a public disclosure prior to the effective filing date of the prior art reference. The inventor will have to also prove what was disclosed. If the inventor orally disclosed an invention at a conference, then the oral disclosure may only be useful to the extent that the inventor has documentary evidence of the contents of the oral disclosure. Moreover, if the inventor’s earlier public disclosure was directed to subject matters A and B but not C but your patent application is directed to subject matters A+B+C, then the earlier public disclosure is only useful to overcome a reference in relation to subject matters A and B and not A+B+C. The earlier public disclosure will be useful for only what it discloses. Hence, inadequate disclosures are ineffective.
Proceed with caution
The Patent Act is new law. The United States is in a period of transition. Although Congress enacts the law and the President carries out the law, the judiciary through case law interprets the meaning of the law which takes time. The prudent course of action at this point is to lean on the side of caution until the language of the Patent Act is litigated and defined.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.