Let The Race Begin: U.S. Joins The World In Rewarding The First Inventor To File

by Perkins Coie
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Introduction

On March 16, 2013, the America Invents Act (AIA) changes U.S. patent law from a first-to-invent system to a first-inventor-to-file system, which moves U.S. patent law into closer harmony with most industrialized nations throughout the world. Among other practical consequences, this change will (1) expand the scope of what constitutes prior art and (2) phase out interference proceedings used to resolve disputes regarding who first invented a technology.

In the new first-inventor-to-file system, a U.S. application will have an “effective filing date,” which is either the earliest priority date or the actual filing date of the application, depending on whether the application properly claims priority to an earlier-filed application. The effective filing date affects what art (e.g., patents, publications, etc.) are considered to be prior art with respect to the application. Under current U.S. patent law, an applicant can possibly overcome art based on an inventor’s pre-filing activities that antedate the effective date of art. This process is known as "swearing behind" art. The United States is the only major industrialized country to recognize this exception, which the AIA eliminates.

Unlike some strict first-to-file systems in foreign jurisdictions, the AIA will continue to permit certain exceptions to what constitutes prior art based on a one-year grace period. For example, an inventor's own public disclosures within one year of the effective filing date, as well as public disclosures by individuals who derive the disclosed subject matter from the inventor, will continue to be excluded from the prior art.

Prior Art Under the AIA

The AIA broadens the scope of prior art that can be used against patent applications and patents. Under 35 U.S.C. § 102(a) of the AIA, a person shall be entitled to a patent unless: 

  1. The claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention; or

  2. The claimed invention was described in a patent issued under Section 151 or in an application for patent published or deemed published under Section 122(b) in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

Section 102 under the AIA defines prior art based on the effective filing date of the application (i.e., the filing date of the earliest application to which the current application can claim a priority benefit or the actual date of filing of the application) and on a worldwide scope. The chart below shows the broadened scope of prior art under the AIA.

Prior Art

Current Pre-AIA Law 

AIA

Public Use, Sale, Offer for Sale Activities in United States Activities Anywhere in World
U.S. Application Claiming Priority to Foreign Application Prior Art based on U.S.
Filing Date
Prior Art based on Foreign Filing Date
International Application Claiming Priority to Foreign Application Prior Art based on International Filing Date Prior Art based on Foreign Filing Date

Section 102 under the AIA fails to state whether on-sale activity has to be public to constitute prior art. The safest course of action is to assume that non-public sales and non-public offers for sale, whether in the United States or foreign jurisdictions, constitute prior art activities under § 102(a).

Prior art under § 102(a) is available as prior art for an obviousness analysis under § 103 of the AIA. As a result, the scope of prior art available for obviousness determinations under the AIA is different (often broader) than the scope of prior art available in some foreign jurisdictions. For example, “secret” prior art (e.g., an earlier filed application by another that publishes after an applicant’s effective filing date) can be used in obviousness determinations under the AIA but cannot be used in obviousness determinations by the European Patent Office.

Strategy Considerations

  • File early to obtain an early effective filing date in order to (1) limit the amount of prior art that can be used against you and (2) create early prior art that can be used against competitors.

  • After filing a provisional application, file additional provisional application(s) to secure early effective filing dates for important developments within 1 year of the first filed provisional application. 

  • Foreign companies that currently file U.S. provisional applications to create “secret” prior art against competitors under 35 U.S.C. § 102(e) may consider filing foreign priority applications instead because those foreign applications establish effective prior art dates under the AIA based on their foreign filing dates. A U.S. non-provisional application can be filed within one year.

Grace Period Under the AIA

The AIA provides a one-year grace period for certain disclosures. An inventor’s disclosure within one year of the inventor’s effective filing date does not constitute prior art under the AIA’s 35 U.S.C. § 102. Such disclosure includes either a disclosure by the inventor or a disclosure by another who obtained the subject matter of the disclosure indirectly or directly from the inventor. An inventor can also remove another’s earlier filed application as prior art under § 102(a)(2) if (1) the subject matter in the earlier filed application was obtained directly or indirectly from inventor, (2) the inventor publicly disclosed the invention prior to the filing date of the earlier filed application and within one year of filing of the inventor’s application, or (3) the inventor’s application and the earlier filed unpublished application are commonly owned or subject to an obligation to be assigned to the same entity.

The grace period under the AIA has some significant limitations. According to the U.S. Patent Office's newly promulgated examination guidelines, another’s prior disclosure or earlier filed application is prior art under the AIA unless its disclosure is identical to the inventor’s disclosure. Consider the following examples:

Example 1: Inventor A makes her invention public (e.g., by publishing it in a scientific journal). Author B then independently publishes an article about the same invention. Inventor A then files a patent application. Result: No patent for A because the publication by B is prior art against A.

Example 2: Same facts as Example 1 but that Author B merely reworks A's publication, adds his own trivial additional content, and then publishes it as his own original work. Result: A may get a patent but only after facing the difficult and complex task of proving derivation by B. Consequently, relying on the grace period is very risky.

Strategy Consideration

  • Consider avoiding reliance on the AIA’s limited grace period. If there is a pre-filing public disclosure, keep records of the disclosure to potentially overcome prior art. Importantly, pre-filing public disclosures may prevent patenting in many foreign countries.

Determining Whether the AIA Applies

Pre-AIA law applies to all applications filed before March 16, 2013. The AIA’s prior art provisions apply to (1) an application or patent that contains, or contained at any time, a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013 and (2) an application or patent claiming the benefit of any application or patent that contains, or contained at any time, a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013.

A non-provisional application with a filing date on or after March 16, 2013 can be under the pre-AIA law if it (1) claims priority to a priority application filed before March 16, 2013 and (2) contains only claims supported by the priority application. If the non-provisional application contains one or more claims that are not supported by the priority application, it will fall under the AIA. Additionally, all claims in a non-provisional application may fall under the AIA if the non-provisional application had at any time included a claim having an effective filing date on or after March 16, 2013. AIA status is irreversible. Once an application falls under the AIA, it remains permanently under the AIA, regardless of subsequent changes to the claims.

Strategy Considerations

  • Consider filing non-provisional applications, including continuation-in-part applications, before March 16, 2013 to ensure examination under the pre-AIA prior art law. If avoiding the AIA is important, and if additional material must be added to a provisional application to be re-filed as a non-provisional after March 15, 2013, then consider filing two non-provisional applications—with the first application identical to the provisional application and the second application containing the additional material. With this approach the first application conclusively avoids the AIA.

  • Analyze effective filing dates of all claims throughout prosecution for non-provisional applications filed on or after March 16, 2013 and claiming priority to any pre-AIA priority application to avoid unwanted examination of the entire non-provisional application under the AIA’s new prior art provisions.

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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