The U.S. Becomes First-to-File For Patents

Authors: Cameron Tousi and Heain Lee

On September 16, 2011, President Obama signed the America Invents Act (AIA). Along with other significant changes to the U.S. patent system, this legislation converts the “first to invent” system to a “first inventor to file” system. These provisions of the Act went into effect on March 16, 2013. The new first-inventor-to-file” (FITF) system is a hybrid of the first-to-invent system preceding the Act and an actual first-to-file system, where the first inventor gets priority to the patentable invention. Essentially, under the new law, if two inventors independently conceive of an invention and file patent applications on that same invention, the patent will go to the inventor who filed their patent application first. The change to the FITF system applies to all nonprovisional applications filed on or after March 16, 2013. The new legislation also applies to other categories of applications starting on the March 16, 2013 date, namely: (i) all nonprovisional applications claiming domestic benefit of a U.S. non-provisional application or an international application designating the U.S. (i.e., under 35 U.S.C. §§ 120, 121, or 365(c)); (ii) provisional applications (i.e., claiming priority under 35 U.S.C. §119(e)); (iii) foreign applications (i.e., claiming priority under 35 U.S.C. §119(a)-(d)); and (iv) Patent Cooperation Treaty (international) applications (i.e., claiming priority under 35 U.S.C. §365(c)). All applications within these categories (or patents derived from such applications) filed before the March 16, 2013 date would not be covered by the new law. AIA makes a number of significant changes to what constitutes prior art under 35 U.S.C.§102. A first issue is timing. What constitutes prior art will be measured from the effective filing date of the claimed invention, as defined above, rather than the date the invention was actually made, applicable before the Act. Thus, the longer an applicant waits to file his or her patent application after conception, the greater the volume of prior art that may render patent claims as not novel or obvious. Secondly, public use and sales qualifying as prior art are no longer limited to such activity in the U.S., but also include world-wide activity (i.e., world-wide public use, sales and offers of sale before the filing date). The Act also amends the definition of “prior art” to include anything else “otherwise available to the public” anywhere in the world. This provision may be considered problematic, because it may take years of U.S. Patent and Trademark Office and court rulings to define this rather imprecise language. Before such decisions are rendered, it is probably safe to assume that if a person skilled in the art using reasonable diligence could have found the art, it would fall within the standard. Additionally, under the Act inventors maintain a protective grace period for their own disclosures, but the right has been curtailed. To clarify, before the Act, inventors had a one-year grace period to file a patent application to prevent their own disclosures from becoming prior art against their application for patent. This also applied to disclosure by third parties if the inventor-applicant could demonstrate that the subject matter of the third party’s disclosure was directly or indirectly obtained from the inventor. Further, the inventor was allowed to swear behind any reference having an earliest effective filing date falling during the grace period. However, under the new provisions, while the inventor maintains the one year personal grace period, the protection from third party disclosure applies solely to the inventor’s own disclosures, and not variations of it. The practical effect is to make the inventor prone to obviousness rejections using variations of his or her own disclosures by third parties. Under the new law, it is also no longer possible to swear behind the reference in the above manner. Proponents of AIA believe that an FITF system will lessen the amount of unprecedented patent lawsuits that technology companies are often subjected to. This will bolster innovation, streamline the patent system, reduce patent litigation, and keep the U.S. globally competitive. The FITF system is said to simplify the application process and bring the U.S. patent law in better harmony with other countries which will reduce U.S. applicants’ disadvantages in seeking patent rights outside of the U.S. However, critics of the Act claim that this transition will favor market incumbents who will race to the PTO to file their new applications, while putting new innovators, such as small businesses and startups, who cannot so easily file their innovations at a real disadvantage. Startups that have traditionally relied on patents for protection from competitive risk will have the added risk of easier copying by established players in the marketplace. This argued weakening of patent protection is said to diminish incentives for capital investments and development while concurrently creating greater options for would-be infringers. Opponents of the Act also worry that it will weaken patent protection only in the United States, which by many authorities is the most inventor empowering system in the world. Like for any new patent legislation, a watchful eye of PTO rule announcements, district court holdings and Federal Circuit review are warranted.