Being The First Inventor No Longer Counts

By George Rondeau

The most significant change in U.S. patent law goes into effect on March 16, 2013 when for all patent applications filed on or after that date the U.S. switches to a “first-to-file” system. Under the America Invents Act (AIA) the first inventor to file a patent application for an invention will be awarded the patent even if another invented it first. In competitive industries, this creates pressure to file patent applications earlier than previously required since being first to make an invention no longer matters. One big exception is where an inventor makes a public disclosure of his invention before the first patent application is filed by another inventor.

Most of the significant changes flow from the revised definition of prior art, against which an invention is measured to determine patentability, and the stated exceptions to prior art. Under the AIA an invention is not novel if patented, described in a printed publication, in public use, on sale or otherwise available to the public anywhere in the world before the effective filing date of a patent application for the invention. A fairly straight forward concept without limitation to geography or who made the public disclosure.

However, a big exception is provided for a disclosure by the inventor of his own invention (or by another who has derived the information disclosed from the inventor), and for a disclosure by a third party at a date after an earlier disclosure was made by the inventor of his own invention (or by another who has derived the information disclosed from the inventor). To take advantage of this exception the inventor must file a patent application for the invention disclosed within one year from the date of the first disclosure covered by the exception. Unlike under prior U.S. patent law, the one-year grace period does not apply to all public disclosures (e.g., it does not apply to an independent disclosure by a third-party before the inventor publicly discloses his own invention, even if the inventor can prove he invented his invention before the disclosure and filed his patent application within one year after the disclosure, unlike was the case under prior U.S. patent law).

Summary of New One-Year Grace Periods and Other “Prior Art” Rules

While the one-year grace period under prior U.S. patent law no longer exists for new patent applications, the AIA effectively creates a number of new one-year grace periods and other new rules on what constitutes prior art. These are, in hopefully plain English, summarized below:

1. If a disclosure was made by the inventor, or someone obtaining the information from the inventor, it will not be prior art against the inventor for one year after the disclosure (i.e., a one year grace period for his own disclosures and disclosures of information obtained from the inventor). This exception applies to an inventor who makes the first disclosure of the invention. (Note that if before the inventor makes a disclosure of his invention and before he files an application for the invention, another person who independently arrived at the invention makes a disclosure by way of a printed publication, public use, on sale or otherwise makes the invention available to the public anywhere in the world, that disclosure by the other person will be prior art against the inventor – there is no exception applicable to that situation.)

2. If the inventor, or someone obtaining the information from the inventor, made the first public disclosure, a subsequent disclosure by another inventor of the same subject matter will not be prior art for one year after the disclosure by the other inventor (i.e., a one year grace period for disclosures by other inventors if the inventor or someone obtaining the subject matter disclosed from the inventor was first to make a public disclosure of the invention). However, the public disclosure by the inventor will be prior art against his own application if filed more than one year after that public disclosure.

3. If the subject matter of a patent application or patent by another was obtained from an inventor, then the patent application/patent will not be prior art against the true inventor (i.e., the other person copied the invention from the true inventor). Presumably the publication or issuance will be a disclosure that triggers the one year grace period first mentioned since derived from the inventor.

4. If the inventor, or someone obtaining the information from the inventor, made a public disclosure of the invention, and before the inventor files his application, another inventor files an application, the application by the other inventor will not be prior art. Being first to publicly disclose blocks subsequent patent applications filed by others from being prior art against the later filed application of the first inventor to publicly disclose his invention. However, the public disclosure by the inventor will be prior art against his own application if filed more than one year after that public disclosure.

5. If the patent application by the inventor and another are owned by the same person (or subject to an obligation to assign to the same person) no later than the filing date of the second application, then the first application is not prior against the second filed application. Note that other type public disclosures, such as a publication, public use or sale prior to the effective filing date of the inventor’s effective filing date, will be prior art.

While being “first to invent” no longer has any role in determining who obtains a valid patent in the U.S., the first inventor to make his invention public assures himself that no other inventor can patent the invention and that public disclosures and patent applications by the other inventor will not be prior art against him. Effectively, by making the first public disclosure of an invention, the first-to-disclose inventor gets a one year grace period in which to file his application without his own public disclosure being prior art against himself and without another inventor being able to block him by filing the first application on the invention or making a subsequent public disclosure of the invention. Thus, the U.S. has created two paths to winning the patent race, one, be the first to file a patent application (assuming nobody makes a public disclosure of the invention before you file the application), or two, be the first to publicly disclose the invention (assuming nobody files an application on the invention before your public disclosure).

One downside to using this “first-to-disclose” approach is its impact on foreign patent rights. In most countries a public disclosure before filing a patent application immediately results in loss of patent rights, most times without regard to where the public disclosure occurred.

Significant Unknowns

It is unknown if the court-made “experimental use” exception will survive. In the past, a public disclosure or offer for sale by an inventor was given special treatment if for an appropriate experimental purpose and would not start the one-year grace period running. Under the AIA the experimental nature of these activities may be irrelevant. Also, it is unknown how a sale subject to a confidentiality requirement will be treated. Will a sale which does not make the invention available to the public still be considered prior art?

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