Patent Act: First to file and its exceptions

Under the Patent Act, any disclosure dated prior to the filing date of the inventor’s patent application will be 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.

First exception

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.

A 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.

Second exception

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.

A 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 waiver of foreign patent protection.