[author: Raymond A. Miller and Aparna Nemlekar]

September 16, 2012 marked the second wave of implementations of the America Invents Act. The first wave of implementations took place a year ago, September 16, 2011, and included changes to false marking, fees, micro-entities, prior user rights, and best mode, among others. In this second wave came changes to the Oath/Declaration, as well as the institution of Supplemental Examination, Post-Grant Review, Inter-Partes Review, and Pre-Issuance Submissions (third -party prior art submissions).

As we go forth, the third wave of implementation will take place on March 16, 2013, fundamentally changing the U.S. patent system from the current first-to-invent (FTI) system, in which rights to a patent are granted to the first inventor, to a first-inventor-to-file (FITF) system, in which rights to a patent are granted to the first person who is an inventor to file a patent application. This change will more closely harmonize the U.S. patent system with that of the rest of the industrial world.

We think it is important that all of our clients consider the impact of this transition. Before March 16, 2013, clients should consider filing well-thought-out claims that create a flexible set of options for handling prior art after the conversion to the first-inventor-to-file system. The options for addressing prior art will certainly change after March 16, 2013.

The following is a brief summary of the most significant changes caused by the transition to the first-inventor-to-file system. If you have concerns about this transition or any other implementation of the America Invents Act, please do not hesitate to contact Pepper Hamilton LLP.

Effective Filing Date

After March 16, 2013, the “effective filing date” of the application will be paramount in determining which system, first-to-invent or first-inventor-to-file, the application will be examined under. The effective filing date is determined on a claim-by-claim basis and is defined as the earliest priority date for which a claimed invention has support, or the actual filing date if there is no priority claim to an earlier application. Priority dates can come either from parent applications in the United States or from foreign earlier-filed corresponding applications.

The new first-inventor-to-file laws will apply to any application or patent that contains or contained at any time a claim to a claimed invention having an effective filing date on or after March 16, 2013. Therefore, in an application filed on or after March 16, 2013:

• if all the claims in the application are entitled to an effective filing date before March 16, 2013, then the application will be examined under the first-to-invent system
• if all the claims in the application are entitled to an effective filing date after March 16, 2013, then the application will be examined under the first-inventor-to-file system
• if even one claim is presented (even if later cancelled) that is entitled to an effective filing date after March 16, 2013, then the entire application will be examined under the new first-inventor-to-file system.

Cannot Antedate Another’s Prior Art

Notably, the shift to a first-inventor-to-file system means that patent applicants can no longer antedate a prior art reference of another, subject to the limited publication conditioned grace period described below. Particularly, it will no longer be possible for a patent applicant to overcome an earlier filed published application of another by showing earlier inventive activity.

Expansion Prior Art

One significant difference under the first-inventor-to-file system will be the expansion of the collection of prior art that will be available to the examiner. Under the first-inventor-to-file system, prior art will be available as of its the effective filing date. For example, under the current first-to-invent regime, a published U.S. patent application or published PCT application in English designating the U.S. would qualify as prior art as of its U.S. or PCT filing date, regardless of earlier foreign priority dates. Under the first-inventor-to-file system, however, there are no geographical or language barriers for qualification as prior art. If an application is entitled to a foreign priority date (i.e., its effective filing date), the application qualifies as prior art as of the foreign priority date.

Because a patent application is prior art as of its effective filing date, one advantage of the new first-inventor-to-file system is that an applicant’s effective filing of an application will be defensive prior art for the purposes of novelty and obviousness from its priority date.

Limited Publication-Based One-Year Grace Period

The act’s first-inventor-to-file system provides inventors with the benefit of a limited one-year grace period with respect to the inventor’s own disclosure. Accordingly, an applicant who publicly discloses an invention in, for example, a publication, can still safely file a U.S. application within one year of that disclosure, without the disclosure being available as prior art against the U.S. application. In addition, using the publication, the applicant will be able to antedate a third-party application, where the third party files an application between the date of the applicant’s published disclosure and the filing date of the applicant’s application.

Applicants, however, should be cautioned that the third party may be entitled to file an application on any scope that is not disclosed in the applicant’s published disclosure. Additionally, the publication may be a bar to patentability in most other countries due to an absolute novelty system, in which no grace period is available.

Conclusion

In conclusion, filing a complete, well-reasoned U.S. patent application before the transition date will create an effective filing date before the transition period, and potentially limit the pool of prior art available. Therefore, clients who have or are planning to make a disclosure before March 16, 2013 should consider filing patent applications based on the disclosure before March 16, 2013, including any alterations/improvements since the disclosure. Similarly, clients should consider bolstering any applications currently pending, including provisional applications. Finally, it may become important to keep patent families alive by filing a continuing application in order to claim all patentable and disclosed embodiments supported in the specification.

The March 16, 2013 transition will likely be the most fundamental shift in patent law in our lifetime and serious consideration should be given to filing applications prior to this date to ensure treatment under the current law of first-to-invent.