United States: America Invents Act Final Implementation: From First-To-Invent To First-To-File

The America Invents Act ("AIA"), which went into effect September 16, 2011, introduces some of the most significant changes to the U.S. patent system since the first U.S. patent was issued in 1790. Under the AIA's rolling implementation, we've already seen new law go into effect repealing the "Best Mode" defense, changing the nature of "false patent marking" claims, incentivizing "virtual patent marking," and changing the way patent grants are challenged in the U.S. Patent and Trademark Office ("USPTO"). Now, as of last week, the last of these changes have been implemented and the U.S. has officially gone from a "first to invent" to a "first to file" jurisdiction.

Historically, patent grants in the U.S. have gone to the first party to invent the claimed subject matter. No longer. Like much of the rest of the world, patent rights in the U.S. will now go to the first inventor to file an application in the USPTO for the claimed invention.

As part and parcel of the U.S. move to "first-to-file," the novelty requirement is changing to create an absolute bar to patentability if the claimed invention of a patent application was "patented, described in a printed publication, or in public use, on sale, or otherwise available to the public" anywhere in the world before the patent application's effective filing date. This is a major change. The law before the AIA recognized as a bar to patentability foreign patents and printed publications only; public use, sale or other "public availability" outside of the U.S. was not considered. In addition, the law before the change also permitted applicants in some situations to prove that they came up with their inventions before the effective date of a cited patent or printed publication. Now what matters is when the inventor filed his patent application, and not when he came up with the invention.

The guts of these changes are embodied in new Section 102(a), which states that "[a] person shall be entitled to a patent unless—

Exceptions are carved out in Section 102(b) for certain disclosures made before the effective filing date of the claimed invention, as well as certain disclosures made in patents and applications:

Let's look at a few practical examples of how these provisions will impact the ability to get a patent under the "first to file" system.

SECTION 102(a)(1): In this basic, Party A publicly discloses her invention and, within a year, Party B files an application to patent the same invention. Party B can't get a patent on the invention, even if he can show that he conceived of his invention before Party A's publication. What matters is when Party B filed, not when he invented.

SECTION 102(a)(2): In the next situation, Party A files an application for patent in the USPTO. Later, Party B files an application to patent the same invention. Again, even if Party B could show prior conception of the invention, he would not be entitled to a patent. (As indicated, this situation presumes that Party A independently came up with the claimed invention rather than deriving it from Party B and then beating Party B to the USPTO.)

SECTION 102(b)(1)(A): In this situation, Party B publicly discloses his invention and then, less than a year later, files an application claiming that invention. Because the filing was made within a year of the public disclosure date, Party B is still entitled to a patent.

SECTION 102(b)(1)(A): Where separate inventors work on similar inventions at the same time, the old "first-to-invent" system could result in proceedings at the USPTO to determine who was the first to come up with the claimed invention. What happens under the AIA's first-to-file system? "Can someone just steal my invention and file before I do?" is a fairly common question. Fortunately, the new laws guards against a party getting a patent on subject matter obtained from a later-filing inventor. In this situation, Party A discloses her invention and, less than a year later, Party B files an application in the USPTO claiming that invention. In this case, however, Party A obtained her invention from Party B. Accordingly, Party B is entitled to a patent for the claimed invention; provided, of course, that he can prove that Party A derived the disclosed invention from him. This requires the true inventor (Party B) to either institute a "derivation proceeding" in the USPTO or to file a case in federal court.

SECTION 102(b)(1)(B): In this situation – and perhaps the oddest circumstance possible under the new law – Party B publicly discloses his invention and then Party A, unaware of Party B's invention or disclosure, publicly discloses the same invention. Only after Party A's public disclosure does Party B file an application claiming the invention. Shouldn't Party A's public disclosure defeat Party B's ability to patent his invention in the "absolute novelty" environment created by the AIA? No. Under Section 102(b)(1)(B), Party B's even earlier public disclosure trumps any intervening, third party disclosures. However, Party B must have filed his application within a year of his public disclosure.

Clearly, the changes wrought by the AIA will take some getting used to, just as they will certainly require more deliberate strategic planning when it comes to inventions, both patentable and not, in order to create the strongest competitive position possible.

Clearly, the changes wrought by the AIA will take some getting used to, just as they will certainly require more deliberate strategic planning when it comes to inventions, both patentable and not, in order to create the strongest competitive position possible.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.