Consider Filing U.S. Patent Applications Before March 16

by Saul Ewing Arnstein & Lehr LLP
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Summary

MARCH 16, 2013 is the effective date for major changes made to the U.S. Patent Act by the America Invents Act (“AIA”). These changes should motivate inventors to consider filing their patent applications before the changes take effect. Our specific recommendations are at the end of this Alert.

First to File

Of most immediate impact, for claimed inventions having an effective filing date on or after March 16, 2013, the patent will now be granted to the inventor who was the first to file his/her patent application, not the one who was the first to invent the claimed subject matter. Subsequent filers will no longer be able to argue that they invented the claimed subject matter earlier and are entitled to the patent instead. The only exception is when the later applicant can show that the earlier applicant derived the invention from him/her. Particularly for inventors who may have been sitting on patentable inventions in fields where others are active, time is fast running out to file and retain priority before the new law takes effect.

No Protection from Recent Prior Art

Further, for claimed inventions having an effective filing date on or after March 16, 2013, an inventor can no longer use his or her earlier invention date to overcome prior art by others that became available one year or less before the effective filing date. Inventors must now show that they (or others who obtained the subject matter directly or indirectly from them) publicly disclosed the subject matter earlier than the recent prior art. If the recent prior art is a prior U.S. patent or application by others, and cannot be shown to be commonly owned, the inventor’s public disclosure must have been before the effective filing date of the prior art patent or application. As a result, the benefit of a one-year grace period is all but eliminated, a distressing result for some inventors (although those who routinely file for patents in foreign countries have already learned to work with similar rules).

Broadening of Prior Art

Probably of most impact in the long run, however, is that the AIA greatly expanded the scope of prior art under 35 U.S.C. § 102. First, in addition to public disclosure through patenting, describing in a printed publication, public use, and on sale, prior art now includes “otherwise making the claimed invention available to the public.” This means that an oral presentation can now be cited as prior art. Second, public use and public knowledge are no longer limited to the United States. For example, a presentation anywhere in the world now becomes prior art. Third, Patent Cooperation Treaty (“PCT”) applications designating the United States do not have to be published in English to be effective as prior art. Untranslated PCT applications published in Japanese, for example, nonetheless become prior art as of their PCT filing dates. And, finally, U.S. patents or applications deemed published under Section 122(b) (which includes PCT applications designating the United States) that claim a foreign priority date are effective as references as of their foreign filing date. So, a PCT application designating the United States that is published in Japanese is now effective as prior art as of its Japanese filing date.

Reverse Midas Touch for Mixed-Date Claims

As an added twist, if the application at any time includes a claim with an effective filing date on or after March 16, 2013, or claims priority to such an application, the application as a whole becomes subject to 35 U.S.C. § 102 as effective on March 16, 2013 – even if that particular claim is later cancelled. And, if the application contains a mixture of claims (some having effective filing dates before March 16, 2013 and some on or after), then not only do all claims become subject to the new Section 102 as effective on March 16, 2013, but all claims are also subject to Section 102(g) [prior invention by another in the U.S.], Section 135 [interference proceedings to determine first to invent in the U.S. Patent Office], and Section 291 [civil action in court to determine the first to invent] as effective on March 15, 2013. That means that the post-March 15, 2013 claims can also be rejected because of prior invention by another, or be subject to an adverse finding of prior invention by another, while not being entitled to a pre-March 16 invention date.

What Does This Mean to Applicants?

  • If you filed a provisional application any time after March 15, 2012, and were planning to file a non-provisional (regular U.S. or PCT) application with added subject matter and/or claims within a year of that filing, you should file the non-provisional before March 16, 2013.
  • If you have a new disclosure that you are planning to file as a patent application in the next few months, you should file the application before March 16, 2013.
  • If possible, avoid filing a continuation or continuation-in-part of any application filed before March 16, 2013 if it includes/claims new subject matter, or includes new claims vulnerable to arguments of new matter. In short, do not mix pre-March 16, 2013 and post-March 15, 2013 claims.
  • Consider filing any continuation applications you are contemplating before March 16, 2013.
  • If you have applications subject to restriction requirements, consider filing all divisional applications before March 16, 2013.

Should you have any questions about the information in this Alert, please do not hesitate to contact the author.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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