The Leahy-Smith America Invents Act will bring the United States patent system closer to a "first-to-file" system, but it is important to understand that the changes to 35 USC § 102 have several exceptions to the first-to-file rule. While the one year "grace period" after an inventor's own disclosure is easy to understand, the other exceptions are more complicated. Here, I look at when the first person to file may not prevail under the new system.
New 35 USC § 102(b)(2)
While 35 USC § 102(b)(1) sets forth the "grace period" exceptions that may apply when an inventor made a public disclosure less than one year before he or she filed the patent application, 35 USC § 102(b)(2) sets forth the exceptions that can eliminate the prior art effect of an earlier-filed, third party patent application:
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
As I understand it, subsection (B) provides that subject matter disclosed in an earlier filed patent application (which otherwise would qualify as prior art under § 102(a)(2)) will not be prior art to a later filed patent application if the inventor of the later filed application had publicly disclosed the "subject matter" before the effective filing date of the earlier filed application.
When First-To-File Is Not Enough
Working through possible scenarios demonstrates that being the first to file may not always be enough to be entitled to a patent under the new version of 35 USC § 102. Take the following scenario:
Independent Inventor A discloses Subject Matter
Independent Inventor B files patent application directed to Subject Matter
Independent Inventor A files patent application directed to Subject Matter
Inventor B's patent application, though filed first, will not be prior art against Inventor A's patent application under 35 USC § 102(b)(2)(B). Thus, being the first to file does not guarantee Inventor B a patent. Indeed, Inventor A's disclosure will be prior art against Inventor B's application under 35 USC § 102(a)(1).
Under the current first-to-invent system, Inventor B might have been able to "swear behind" Inventor A's disclosure and/or establish an earlier date of invention in an interference proceeding. Under the new "first-to-file" system, however, Inventor B will lose out, even though he or she was the first person to file, and even if he or she was the first person to invent.
Confusing Independent Inventors?
With all the talk about "first-to-file," this scenario might surprise independent inventors. Indeed, the USPTO, in its efforts to promote patent reform, may be confounding the issue.
On September 14, 2011, the USPTO posted a link on its Facebook page to an article in "Inventors Digest" where Commissioner for Patents Robert Stoll answers the question, "Now that the America Invents Act (patent reform) only awaits the President’s signature – what will be the immediate and long-term effects of first-to-file?" This statement in that article caught my eye:
[U]nder the legislation, a $110 provisional application will establish effective rights to an invention, securing first-inventor-to-file status with no risk of subsequent disputes.
While it may be true that in the majority of cases being first-to-file will establish an inventor's rights against a later filed application, the scenario outlined above demonstrates that that may not always be the case.