Under the America Invents Act (“AIA”), the first-to-file a patent application on an invention is awarded the patent. Under a true first-to-file system like in Europe, the rules require that there be no public disclosure until after the patent application is filed. This is known as absolute novelty. The AIA brings the United States closer to a true first-to-file system but is not a true first-to-file system because of two exceptions.
Two exceptions to the true first-to-file system implemented by the AIA:
- Derivation proceedings. In this proceeding, the applicant of a second application is arguing that the applicant of a first application derived the invention from the information given to him or her by the applicant of the first application. Because derivation proceedings require corroborating evidence of derivation, it will, in my opinion, be difficult to win and won’t be as useful as one might wish.
- Publication by an inventor. This exception indicates that the inventor can publish a document describing his or her inventor then file for a patent application up to one year later. This is similar to the current one-year grace period but is significantly different.
Unfortunately, the current USPTO guidance on the first-to-file rules leads me to believe that these two exceptions will not be as useful as one might wish. We will only find out after a few cases go through litigation so that the courts can tell us what they really mean. Without the benefit of case law, the recommendation is to file first, then disclose. You don’t want to have to rely upon the exceptions to get a patent if you don’t have to. Businesses should not delay filing a patent application until after disclosure because no one really knows how the exceptions will be construed by a court.
Corroborating evidence which is difficult to obtain is needed to initiate a derivation proceeding
Here is why the derivation proceedings will not be utilized much. Under the AIA rules proscribed by the United States Patent and Trademark Office, the applicant of the second application must provide corroborating evidence that the applicant of the first application derived the invention from the applicant of the first invention. The corroborating evidence cannot be the similarity of the invention. Just because two different disclosures disclose the same general concept, it doesn’t mean that the one derived the invention from another. So, think of it this way, if you post something on the internet or distribute a brochure on your invention, an internet user or a recipient of your brochure can tweak your idea and submit a patent application. What type of corroborating evidence do you have that this person or business derived the invention from your information? In fact, the applicant of the first invention may have derived the invention from your information but you won’t be privy to that information. You have to submit the corroborating evidence before the derivation proceeding is even initiated. As such, it will be difficult, if not impossible to provide corroborating evidence to win at a derivation proceeding.
Publication exception may not be as broad as people think
Here is why it is dangerous to rely on the publication exception and it should only be relied upon as a last-chance effort to get patent protection. The publication exception leads patent applicants into a false sense of security. The publication exception in my opinion should be treated as being merely personal to you. If you publish something, then your publication cannot be used against you when your patent application is being examined. If someone else takes your publication and republishes your content in a slightly different way, then publication exception may or may not be effective in eliminating the republished content as prior art. This means that the republished content could bar you from obtaining a patent. The law is unclear at this point. This issue needs to be litigated before there is a definitive answer. Some believe that the publication exception allows the inventor to swear behind any reference dated after your publication date. However, the Patent Office does not construe the publication exception so broadly. They are utilizing an identical subject matter approach which in itself is unclear. In other words, your earlier publication and the publication being cited as prior art must disclose the identical subject matter for your earlier publication to eliminate the republished content from being prior art against your patent application. The litigation will revolve around whether the cited prior art and your earlier publication disclose the identical subject matter. Because the republished information by a third party may be a bar to your patenting efforts, I recommend that you do not rely upon this exception when planning for your next steps. You may be able to overcome the reference but it may cost a substantial amount of money to win the case. Rather, use the publication exception as a backup argument and only when you need it. Don’t use it as the primary argument, not yet at least while the statute needs to be litigated.