Navigating the New U.S. Patent Filing System

Authored by Leslie I Bookoff, Dinesh N Melwani, and Anand K. Sharma

For years, the world watched India's implementation of several changes to its patent laws. Companies and private practitioners spent years tracking the Indian Patent Office and Courts, as they adopted new procedures and practices for the procurement and enforcement of Indian patents. Today, the same audience turns its attention to America.

Just over one month ago, President Obama signed into law the America Invents Act (AIA), the first major overhaul of U.S. patent law in over half a century. Of the many changes, the AIA most notably converts the U.S. patent filing system from a First-to-Invent system to a First-Inventor-to-File system. The world has long been calling for this very reform, and on 16th March, 2013 (the effective date) it will become a reality. The new system will apply to applications that include at least one claim not entitled to a priority date earlier than the effective date.

This fundamental change in the law, along with its transitionary period, presents several challenges to inventors, companies, and practitioners alike. Failure to recognise and address them in advance may well amount to the loss of critical patent rights, in America and abroad.

The First-Inventor-to-File System

To change from a First-to-Invent to a First-Inventor-to-File system, the U.S. Patent Code replaces current 35 U.S.C. § 102(a)-(g) with new 35 U.S.C. § 102(a)-(d). As the name of the new system suggests, the basic premise is to award patents to the first filer, by eliminating the possibility of antedating a prior art reference based on earlier invention. For example, the below timeline shows a common scenario that occurs during patent prosecution. Under the old system, if Applicant A's published application applies as prior art against Applicant B's patent application, Applicant B could antedate Applicant A's filing date by showing earlier inventive activity. But under the new system, Applicant B cannot antedate and is precluded from obtaining a patent because he/she was not the first to file.

Straddling the Effective Date of the First-Inventor-to-File System

Because the change to a First-Inventor-to-File system does not apply to applications already pending on the effective date, or to applications having all claims entitled to a priority date earlier than the effective date, it is important to understand how these new changes can impact the prosecution of applications filed after the changes are implemented. The timelines below show three scenarios demonstrating whether the new or old system will govern the prosecution of an application filed after the effective date of the changes. The first timeline shows a clear-cut situation—the First-to-Invent system applies to any application pending before the changes become effective. The third timeline shows a similarly clear case—the First-Inventor-to-File system applies when both the priority date and the application filing date are after the effective date of the changes. The situation is less clear when the priority date and the application filing date straddle the effective date of the new system, as shown in the middle timeline. In this case, if the application included at any time at least one claim not entitled to the earlier priority date, the First-Inventor-to-File system will govern prosecution, even if that claim was cancelled before examination on the merits. In those cases where the ability to antedate a prior art reference is critical, this distinction must remain at the forefront of any continuing prosecution strategies.

Inventor Grace Period Exception

Despite its name, the new system is not an absolute novelty system; it includes a one-year grace period for an inventor's own work, such as a publication by or obtained from any inventor. For example, if Applicant A publicly discloses first, Applicant A can safely file within one year of that disclosure, even if a third party discloses or files before Applicant A files its patent application. In other words, Applicant A is not precluded from obtaining a patent if a third party files its application between Applicant A's disclosure and filing dates. In this instance, an inventor's disclosure can act as a placeholder while an inventor prepares its application for filing. While this presents certain advantages under the new U.S. regime, the same early disclosure may bar patentability in those countries applying an absolute novelty system.

Significant Effective Prior Art Date Changes

The AIA also expands the pool of available prior art. Under the old system, a published U.S. patent application (or a published PCT application that designated the U.S. and was published in English) qualified as prior art only as of its U.S. (or PCT) filing date, regardless of any earlier foreign priority dates. The new regime, however, eliminates all geographical and language distinctions for such applications. It moves the effective prior art date to the earliest filing date to which an application is entitled to a right of priority, even if the earliest filing date is a foreign priority date. This change is illustrated in the three timelines that follow. As denoted by the star on the first timeline, the published U.S. application qualifies as prior art as of its U.S. provisional filing date under both the new and old regimes. The second and third timelines, however, show how the new regime expands the universe of available prior art. As illustrated in the second timeline, an English international publication of a PCT application designating the U.S. qualifies as prior art under the old system only as of its PCT filing date. Under the new regime, however, that same international publication would qualify as prior art as of the United Kingdom filing date (i.e. the foreign priority date). Similarly, the third timeline shows that under the new system, the illustrated PCT publication/U.S. patent will qualify as prior art as of the French priority date, regardless of language of the international publication.

How to Work Within the New System

The AIA's change from a First-to-Invent system to a First-Inventor-to-File system involves more than simply awarding patents to the first filer. The change not only can result in loss of patent rights, but also can impact the patentability of applications filed after the changes are implemented. Thus, patent Applicants should gain an early understanding of the changes and develop strategies to their benefit. One strategy patent applicants should consider - file new non-provisional applications before the changes become effective, so that these applications will be governed by the First-to-Invent system and avoid the larger pool of prior art. Also, in either system, and most especially in the new system, patent applicants should make every effort to file new applications as soon as possible. If preparing and filing a full non-provisional application requires significant time, patent Applicants should consider filing a provisional application to secure an early priority date. Further, patent Applicants should take care when adding claims in applications having priority and filing dates that straddle the effective date of the changes. Adding even a single claim not entitled to a preimplementation priority date, even if that claim is later cancelled, will irreversibly cause the application to proceed under the First-Inventor-to-File regime.

Originally printed in Manupatra Intellectual Property Reports. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.