One of the central reforms of the AIA is changing the United States patent system from a “first-to-invent” system to a “first-to-file” system, once the relevant provisions go into effect (on March 16, 2013). In principle, a “first-to-file” system would mean that, as between two claims of ownership to the same invention, the inventor who files a patent application first rather than the inventor who invents the invention first would be entitled to a patent on the invention. But it’s not quite that simple under the AIA.

Instead, when the new system kicks in, the AIA offers multiple ways to establish priority. For example, priority is given to the inventor who first files a patent application or first discloses the invention to the public, so long as that inventor then files a patent application within a year of disclosure. In addition, the AIA provides that disclosures by others are not prior art to a claimed invention if the inventor had disclosed his invention before those disclosures.

What will this mean down the road in litigation challenging the validity of patents issued under the new system? First, in their efforts to invalidate asserted patents, litigants will likely dispute the meaning of “disclosure” in Section 102(b), including whether the term is limited to publication or includes public use and sale. Second, litigants will seek discovery on the nature and timing of possible disclosures that may constitute either the patentee’s own “public disclosure” or the challenger’s invalidating prior art:

  • printed publications,
  • patents,
  • patent applications,
  • public use,
  • offers for sale,
  • sales, and
  • any other instances of the invention being available to the public.

This probably sounds familiar. That is because the precise contours of priority disputes, especially what counts as relevant prior art, have been changed by the AIA, but the type and amount of fact discovery that will be sought with respect to these issues during litigation is likely to be similar to what is routinely sought now in litigation involving patents issued under the current system. In short, the old Section 102 will be replaced with new nomenclature (pdf), but many of the same discovery fights will persist during the course of litigants’ efforts to find prior art to invalidate patents issued under the new system.