First-inventor-to-file system under the America Invents Act

The America Invents Act (“AIA”) was signed into law on September 16, 2011, but different parts of the America Invents Act take effect at different times.  The provisions transitioning the United States from a first-to-invent system to a first-inventor-to-file system become effective March 16, 2013.  However, acts of the inventor before that date may alter the results for patent applications filed after March 16, 2013, as discussed below.

 Absolute Novelty

Under the America Invents Act, the general rule is that absolute novelty is required to seek patent protection for an invention.  If the invention is otherwise made available to the public or on sale before the effective filing date of a patent application – anywhere in the world, then no patent protection may be sought for the invention. Under prior law, use or sale in a foreign country did not necessarily invalidate a patent.

Win the race to the Patent Office

Moreover,under the America Invents Act, no patent will be granted to a second inventor to file a patent application if another inventor has already filed a patent application (i.e., first inventor to file) and such patent application matures into a patent or is published.  As such, the first person to win the race to the Patent Office and file a patent application is awarded the patent.

First exception: derivation

But the America Invents Act contains two important exceptions to the new absolute novelty and the first inventor to file rules.  Under the first exception, if (1) the disclosure that bars the inventor from obtaining a patent was made less than one year before the filing of the inventor’s patent application (inventor’s public disclosure) AND (2) the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor (i.e., derivation), then such disclosure will not be considered as prior art.  Disclosures by the inventor or someone who derived the information from the inventor for the first year will not be used against the inventor.

Second exception: public disclosure exception

The second exception circumvents the absolute novelty and the first-inventor-to-file rule.  If a second inventor to file a patent application publicly disclosed the subject matter before a first inventor to file a patent application (i.e., public disclosure exception), then the second inventor to file can use his/her earlier public disclosure to overcome a rejection based on the first filed patent application.  Because of this second exception, the first-to-file system under the AIA may be described as the first to file or publish system.  Because of potential various interpretations of this second exception, expect to see litigation in this area.  Moreover, during this period of uncertainty, instead of relying on the public disclosure exception, file whatever document that was going to be publicly disclosed and file such document with the Patent Office as a provisional patent application.

This public disclosure exception offers a limited opportunity to “game” the system.  Under the AIA, an inventor that publicly discloses an invention on or after March 16, 2012 and files a corresponding patent application within one year can be awarded a patent based on that public disclosure, while the public disclosure should bar a patent application filed by another who first discloses or files after the date of the inventor regardless of who invented first.  The date of invention might be under the first to invent system but if the patent application is filed after March 16, 2013, then the first inventor to file system applies.

Text of the first-inventor-to-file

Below is the actual text of the first-inventor-to-file section of the AIA.  The AIA is consistent in certain areas but in consistent in others.  It is imperative to consult a patent attorney before implementing a patent protection strategy due to differences in interpretations of the meaning of the AIA, and because courts have not confirmed how the new language is to be interpreted.

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—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.

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

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