On March 16, 2013, the United States will transition from a first to invent system to a first to file system under the America Invents Act (“Patent Act”). As the March 16, 2013 date approaches, inventors and businesses should consider the following things 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.
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.
Definition of public disclosure
Under current U.S. Patent Laws, a printed publication is one that can be found by those interested in the subject matter. The expectation is that the legal definition of public disclosure used in the Patent Act will be similar to the legal definition of printed publication. If so, then if you publish your invention on the Internet on a random website, then can those interested in your invention find it on the Internet? Based on my experience, Google does not immediately index all web pages. Even if a web page is indexed, the information might be ranked on the 100th page. Is this a sufficient public disclosure to fall within the second exception? At this point, no one is sure. The provisions of the Patent Act must be litigated and the courts must decide the issues on the merit.
In developing a patent protection strategy, if an inventor or business is considering taking advantage of the public disclosure exception, then the better route would be to file one or more provisional patent applications early and often at least until the courts define public disclosure. Moreover, be aware that the public disclosure option will only be good for what it discloses just like a regular patent application.
I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. 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.