AIA First-Inventor-To-File Provisions: What to Do Now, What to Do Later

On 16 March 2013, the first-inventor-to-file provisions of the America Invents Act (AIA) will become effective. The new legal climate will pose additional challenges to obtaining a US patent that demand strategic choices both before and after the law changes.
Under the new law, the first inventor to file a patent application will be awarded priority of invention. Inventors will no longer be able to rely on a prior date of conception of the invention to overcome prior art. Many applicants already appreciate the importance of being the first inventor to file, particularly those applicants having interests outside of the US and mindful of the first-to-file requirement in every other jurisdiction. Thus, for applicants who typically seek global patent protection, this change will not be a significant shift.
A second change with potentially greater impact is that applications having an effective filing date on or after 16 March 2013 will be subject to a broader range of prior art. In particular, the geographic limitations and English language requirements of pre-AIA 35 USC §102(a) and §102(b) disclosures no longer apply. One result is that a publication by another will be prior art as soon as it is published if it predates both applicant's filing date and any prior disclosure by the applicant. There is also a new catch-all category of prior art defined as subject matter "otherwise available to the public." However, it remains unclear whether a prior non-public or secret sale will preclude patentability. As in the current system, an inventor's own prior disclosure will not bar patentability in the US so long as the patent application is filed within one year of that disclosure. There is also a one year grace period for disclosures made by a joint inventor or by another who obtained the subject matter from the inventor/joint inventor. Subject matter obtained as a result of a joint research agreement and commonly owned by the applicant is likewise unavailable as prior art.
New Inventions
The pre-AIA first-to-invent regime will almost always place the applicant in a more advantageous position given the more limited scope of available prior art. Accordingly, if there are new inventions that are nearing maturity, it may be beneficial to file a non-provisional application prior to 16 March 2013. Given the consequences of adding new disclosure after the first-inventor-to-file provisions become effective (see below), care should be taken to draft a thorough application, including a complete set of claims.
Existing Applications
Once the first-inventor-to-file laws are implemented, there will be a transition period in which different claims of an application may have different effective filing dates. In these so-called "hybrid applications," some claims have an effective filing date before 16 March 2013, and other claims have an effective date thereafter. For example, a hybrid US non-provisional or PCT application filed after 16 March 2013 and claiming priority to a "pre-March 16, 2013" application, may contain some claims fully supported by the priority application, and other, new claims supported only by newly added disclosure. The claims supported by the priority application will have an effective filing date that is earlier than that of the new claims. However, all of the claims in such a hybrid application (and also in continuation-in-part applications) are subject to the broader range of prior art under the AIA as well as the prior art provisions of pre-AIA 35 USC 102(g) (prior invention by another, which was not abandoned, suppressed, or concealed). In addition, once new disclosure is added, it may not be later canceled to inure the benefits of the first-to-invent regime.
In considering how to advance existing portfolios, we offer the following recommendations:
1. If new disclosure is to be added to an existing application whose benefit of priority will be sought, then consider filing a new non-provisional US and/or PCT application (containing the new disclosure and claiming priority to the existing application) in advance of the 16 March 2013 effective date.
2. If item 1 above is not possible for any reason, then consider filing two non-provisional US and/or PCT applications that claim priority to the existing application, one of which is identical to the existing application filed before 16 March 2013, and the other of which includes the additional disclosure.
For implementation of the AIA first-inventor-to-file provisions, the USPTO has published proposed amendments to the rules of practice in patent cases (77 Fed. Reg. 43742 (July 26, 2012)). Proposed examination guidelines were also published to inform the public of changes in examination based upon the Office's interpretation of the statute (77 Fed. Reg. 43759 (July 26, 2012)). Public comments have been gathered (see here and here), and the final rules and examination guidelines are expected to be published by 16 February 2013.
If you have any questions about the issues raised in this client alert, please contact Womble Carlyle patent attorneys Julie Broadus Meigs, Thomas A. Cawley, Jr., Russell S. Timm, and Alireza Behrooz or the Womble Carlyle attorney with whom you usually work.