AMERICA INVENTS ACT - First-Inventor-To-File

November 21, 2012

This is the ninth article in a series of 10 relating to the Leahy-Smith America Invents Act of 2011 (AIA). The AIA went into effect on Sept. 16, 2011, and is the first major change to United States Patent Law in more than five decades.

This article discusses the new first-inventor-to-file provision that will be implemented under the AIA. The new first-inventor-to-file system will apply to any patent or patent application having an effective filing date on or after March 16, 2013.

Currently, the U.S. operates under a first-to-invent system, whereby a patent is awarded to the inventive entity that invents first. Under the first-to-invent system, evidence relating to conception, diligence, reduction to practice, abandonment, suppression and/or concealment of an invention are relevant to the patentability of an invention, as proof of same may ultimately determine if an inventor is entitled to a patent on his/her invention. For example, the U.S. Patent and Trademark Office (USPTO) can institute and conduct interference proceedings when two or more separate inventors claim ownership in the same invention. The USPTO will assess all of these types of evidence in order to determine which inventor is entitled to receive a patent on the invention.

With the implementation of the first-inventor-to-file system, however, any consideration regarding conception, diligence, reduction to practice, abandonment, suppression and/or concealment of an invention will no longer be relevant to the patentability of an invention. Rather, the only consideration of any importance will be which inventive entity is the first to file a patent application on its own invention, as the first inventor to file will be awarded a patent by the USPTO. As the U.S. is the only country that currently operates under a first-to-invent system, this change will bring the U.S. patent system more in line with those of other countries.

In view of the change to a first-inventor-to-file system, the USPTO's interference proceedings will be abolished. However, it is recognized that a first-inventor-to-file system may affect the rights of an inventor who is a first-to-invent, but second-to-file, inventor. If the first-to-invent, but second-to-file, inventor has sufficient basis to allege that the first-to-file inventor copied or "derived" the invention from the first-to-invent, but second-to-file, inventor, a derivation proceeding can be instituted and conducted by the USPTO in order to determine which inventor is rightfully entitled to receive a patent on the invention. A more thorough discussion of the new derivation proceedings will be discussed in the tenth and final article in the present series relating to the AIA.

In implementing the change to the first-inventor-to-file system, changes also have been made to the novelty and obviousness standards under 35 U.S.C. §§102 and 103. Under the first-inventor-to-file system, the pertinent date for patentability is the effective filing date of an application. The effective filing date is defined as either the actual filing date of the application or the filing date of the earliest application to which priority is claimed.

Novelty under 35 U.S.C. §102 will be determined based on whether any prior art is available before the effective filing date. More specifically, new 35 U.S.C. §102(a)(1) states that a person shall be entitled to a patent unless "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." However, 35 U.S.C. §102(b)(1) provides two exceptions to 35 U.S.C. §102(a)(1), namely, that a disclosure made by the inventor or obtained either directly or indirectly from the inventor one year or less before the effective filing date will not be considered prior art, and that a one-year grace period follows the inventor's public disclosure.

New 35 U.S.C. §102(a)(2) states that a person shall be entitled to a patent unless "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." However, 35 U.S.C. §102(b)(2) states that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. §102(a)(2) if the subject matter disclosed: (1) was obtained from the inventor or a joint inventor, (2) had been publicly disclosed by the inventor, the joint inventor, or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor before the effective filing date, or (3) was owned by the same person or subject to an obligation of assignment to the same person.

Obviousness under 35 U.S.C. §103 also will be determined as of the effective filing date of the application rather than at the time of invention. More specifically, 35 U.S.C. §103 states that "a patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made."

While the first-inventor-to-file system will become effective as of March 16, 2013, it is important to note that the current novelty and obviousness provisions will not be automatically eliminated on that date. The current provisions will still apply to applications filed before March 16, 2013, and continuations of such patent applications. However, the amended versions of these provisions will apply to all applications with an earliest effective filing date on or after March 16, 2013.

For more detailed information about the AIA or any other intellectual property matter, please contact Jim O'Malley, jomalley@clarkhill.com , or any member of Clark Hill's IP practice group.