On March 16, 2013, the United States transitioned from a first to invent system to a first to file system under the America Invents Act (“Patent Act”). Inventors and businesses should consider the following aspects of the law when implementing a patent protection strategy.
General rule and the exceptions
Under the Patent Act, any disclosure dated prior to the filing date of the inventor’s patent application will considered prior art and bar the inventor from being granted a patent on the invention unless one of two exceptions applies. Hence, the general rule is that you must be the first to file.
Under the first exception, if the prior art disclosure is 1 year or less prior to the filing date of the inventor’s patent application and the prior art disclosure is the inventor’s own disclosure or from someone who derived the information from the inventor, then the prior art disclosure will not be considered prior art for purposes of patentability and will not bar the inventor from obtaining a patent. As such, even if the inventor is not the first to file, the inventor can still be awarded the patent.
Caveat to the first exception
The caveat is that the first exception will apply to the extent that the inventor can prove that the prior art disclosure is actually that of the inventor or from someone who derived it from the inventor. Accordingly, to be on the safe side, inventors and businesses should keep track of the names of individuals to whom a disclosure is made and the exact subject matter being disclosed to those individuals. Better yet, do not disclose your information until you file a patent application on your idea.
Under the second exception of the Patent Act, if the prior art disclosure is 1 year or less prior to the filing date of the inventor’s patent application and the inventor publicly discloses the subject matter of the disclosure before the date of the prior art disclosure, then the prior art disclosure will again not be considered as prior art for purposes of patentability. As such, even if you are not the first to file, the inventor can still be awarded the patent.
Caveat to the second exception
The caveat is that the second exception will apply to the extent that the inventor can establish an earlier public disclosure date. This exception appears to encourage early publication of an invention since the inventor’s own publication will not be used against him/her under the first exception and the inventor’s earlier public disclosure can be used to overcome a third party’s prior art. However, the courts have yet to construe what is a sufficient public disclosure under the Patent Act that can be used to overcome prior art. Also, keep in mind that taking advantage of this exception may be a wavier of foreign patent protection.
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.