On Saturday, March 16, 2013, the first-inventor-to-file provisions of the America Invents Act1 (AIA) take effect. The provisions fundamentally alter United States patent law. For patent applications examined under the first-inventor-to-file AIA provisions:
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Patents will be awarded to the first inventor to file a patent application (not the first inventor to invent).2
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Patent applicants will not have recourse to interference proceedings to demonstrate that the applicants were the first to invent.3
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The prior-art universe will significantly expand. For example, the prior-art universe will enlarge to include public uses and public sales outside of the U.S.4 Also, patents and published patent applications will be available as prior art as of their earliest filing date, including foreign filing dates.5
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The U.S. grace period will significantly narrow to be a personal grace period for the inventor(s), and invoking the personal grace period may be problematic.6
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Patent applicants likely will be required to state in writing to the U.S. Patent and Trademark Office (PTO) if at least one claim in a patent application has an effective filing date on or after March 16, 2013.7
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Patent applicants likely will be required to state in writing to the PTO if a child application filed on or after March 16, 2013, contains subject matter not disclosed in a parent application: i) to which priority is claimed, and ii) that was filed before March 16, 2013.8
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Some art that otherwise would be prior art, including anticipatory prior art, will be removable if a joint research agreement was in place on or before the date the application was filed.9
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If a child application filed on or after March 16, 2013, claiming priority to a parent application filed before March 16, 2013, contains or at any time contained at least one claim that is not supported in the parent application, all child application claims will be examined under the new AIA rules.
These significant changes10 will require that many patent applicants adjust their intellectual property strategies now and in the future.
In the near term, many patent applicants may find it advantageous to obtain patents under the older first-to-invent system. Thus, it may be advantageous for patent applicants to adopt the following suggestions:11
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Consider filing non-provisional applications, including conversions of pending provisional applications, those adding subject matter to PCTs, and continuation-in-part applications, before March 16, 2013, to ensure examination under pre-AIA law.
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For applications filed on or after March 16, 2013, that claim priority to an application filed before March 16, 2013, consider filing two applications where the claims are separated based on surety of support.
In the intermediate term, it may be advantageous for patent applicants to adopt the following suggestions:12
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Have a review and approval policy in place for outside (e.g., public) publications and talks. Consider not allowing public disclosure of material in a publication or talk until the material has been captured in an on-file provisional application.
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Streamline and optimize the process from invention disclosure to application drafting to provisional application filing. Under the new first-investor-to-file laws, companies with faster and more efficient processes will win the race to the PTO.
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Consider increasing the amount of detail/granularity in invention disclosure forms to facilitate application drafting.
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When drafting new applications, consider including additional "fall back" positions in anticipation of dealing with an expanded prior-art universe.
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Consider filing provisional applications as soon as possible, ensuring that the statutory requirements of describing the new invention(s) and teaching how to make and use the new invention(s) are met.
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To the extent allowed by budgetary constraints, consider filing provisional application(s) on all invention(s) first and decide on the significance of the invention(s) later.
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Consider filing a follow-on provisional application each time a new improvement is realized.
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Because of the increased ability of joint research agreements to remove prior art, consider putting joint research agreements of appropriate scope in place before or on the day an application is filed.
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Consider tracking and recording all additions that occur between first and subsequent application filings (for example, between a provisional application and a follow-on provisional application). This could be useful when submitting required statements to the PTO.
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Consider continuing to generate witnessed conception memos and keeping laboratory notebooks. These could be useful in a derivation proceeding.
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Non-U.S.-based companies that previously may have simultaneously filed an application in their home country and a U.S. provisional application may consider not filing the U.S. provisional application. Filing the U.S. provisional application will no longer be necessary to get a "102(e)" date.
The transition to a first-to-file system, along with the other provisions of the America Invents Act, will significantly affect how U.S. patents are obtained, who obtains them, and how the obtained patents are defended if challenged.
In evaluating the AIA, Paul Michel, a well-known, respected, and now-retired judge of the U.S. Court of Appeals for the Federal Circuit, noted: "There will be heightened uncertainty for the rest of the decade."13
Now is the time to discuss and optimize your intellectual property strategy and portfolio. Wilson Sonsini Goodrich & Rosati is prepared to help our clients optimize their patent strategies and portfolios in light of the America Invents Act.
For more information on the first-to-file provisions or any aspect of the AIA, please contact Vern Norviel, Jeff Guise, Peter Munson, Michael Hostetler, Karen Wong, U.P. Peter Eng, Samir Elamrani, Michael Rosato, James Heslin, Maya Skubatch, Esther Kepplinger, Jasemine Chambers, or another member of the firm's intellectual property practice.
