From “First to Invent” to “First Inventor to File”

by Winthrop & Weinstine, P.A.
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One month from tomorrow, the most significant change to U.S. patent law in recent history will go into effect. Since 1790, when the first patent act was signed into law, the U.S. patent system has been a “first to invent” system. Next month, it will change to a “first inventor to file” system. The U.S. Patent & Trademark Office just released the final rules and examination guidelines on Wednesday. Any patent application with an effective filing date on or before March 15, 2013 will be treated under the old “first to invent” rules and any patent application with an effective filing date on or after March 16, 2013 will be treated under the new “first inventor to file” rules. The change affects both utility patents and design patents.

Now you may be asking, “Martha, why is this such a big deal?” Well, because these new rules effectively create “a race to the Patent Office” and potentially increase the number of references that can preclude patentability for your claimed invention. Whether a patent is granted on a patent application largely hinges on whether the claimed invention has been disclosed already in a publicly available reference, or whether it would be obvious to one of ordinary skill in the art to have modified a disclosed method or product in a known way to reach the claimed invention. Additionally, one can no longer “swear back” to their invention date; if the Examiner cited a reference with a filing date that was earlier than your filing date, but your invention date was earlier than their filing date, you could file an affidavit attesting to your invention date and effectively remove the applicability of the cited reference.

Under the new “first inventor to file” system, patentability is precluded where the claimed invention was

  • patented or described in a printed publication prior to the effective filing date of the application,
  • disclosed in a patent or published patent application that names different inventors and was filed prior to the effective filing date of the application,
  • on sale or in public use in any country prior to the effective filing date of the application, or
  • otherwise available to the public as of the effective filing date of the application (e.g. a student thesis in a university library, a poster, or electronically posted on the internet).

In the age of the internet and with a more global economy than ever, that’s a lot of potential for invalidating disclosures. Such disclosures can preclude patentability even if the disclosure was made by the inventors themselves. The few exceptions to this are disclosures made by the inventors or by another who obtained the information directly or indirectly from the inventors (e.g. the inventors’ employer) no more than one year before the filing date, or disclosures where the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventors or another who obtained the information directly or indirectly.

So what are some potential takeaways are there for your client, or you the designer, or you the idea guy?

  • File smart and file early if you want a patent.
    • Whether you are an individual with a “million dollar” idea or in a management role at a large company, strongly consider filing an application (and file it early) because you can no longer claim patent rights based on your invention date alone. Better to be penny wise than pound foolish, right?
    • If you develop products for others, be clear in your agreements on ownership and responsibilities for protecting patentable subject matter.
    • If you are in an organization, provide training for all who might create patentable subject matter and establish processes within your organization to capture such patentable subject matter early and make prompt decisions on whether or not to file .
  • Consider publishing your idea or design on the internet or elsewhere, regardless of whether you file a patent application on it or not.
    • Be aware of the one-year grace period on disclosures by the inventors or another who obtained the information directly from the inventors.
    • Likewise, be aware of what is being published about your products and where it’s being published.

Under these new rules, strategy is more important than ever to protect inventive products, methods and ornamental designs.

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.

© Winthrop & Weinstine, P.A. | Attorney Advertising

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