When two different inventors independently arrive at the same invention, there must be some way to decide which inventor should be awarded a patent. Historically, most patent jurisdictions in the world have made this determination in one of two ways.

The first way, referred to as first-to-invent, awards the patent to the inventor who first arrived at the invention. This approach may be considered to reward inventors on the basis of “who thought of the invention first.”

The second way is to treat the contest like a race to the patent office: the first inventor to file a patent application wins. The latter approach, referred to as first-to-file, rewards the inventor who is quicker to prepare and file a patent application.

Not all that long ago, Canada was a first-to-invent jurisdiction. That changed in 1989, when Canada switched to a first-to-file system. The Philippines made a similar switch in 1998. For many years, the United States has remained the last major jurisdiction having a first-to-invent patent system.

That will change on March 16, 2013. On that date, a third phase of the America Invents Act (AIA) legislation — which was signed into law in 2011 by U.S. President Barack Obama — will come into force, and the U.S. will begin using a first-to-file patent paradigm.

Given the importance of the U.S. market for many Canadian companies, the implications of the new law upon U.S. patent procurement strategies warrant careful consideration. A number of brief general recommendations are set forth below. For specific advice regarding a particular situation, please contact one of the patent professionals in any of our four offices across Canada.

File early. Under the AIA, the universe of prior art that will be available to the U.S. Patent Office (USPTO) for rejecting patent applications will increase.

For example, under the first-to-invent system, an applicant could defeat certain prior art references cited against its patent application by establishing an earlier date of invention based on internal inventor documentation. This is referred to as “swearing behind” a reference as it involves submitting a sworn statement establishing that the date of invention is earlier than, or “behind,” the date of the cited reference.

Under the AIA, it will no longer be possible to eliminate a reference by swearing behind it. Moreover, certain activities not presently legitimately citable against a patent application, such as offers for sale or public uses of the invention outside of the United States, will become fair game under the AIA. The USPTO will also be able to rely on a broader range of international Patent Cooperation Treaty (PCT) applications to reject patent applications. As a result, obtaining an early filing date will be important under the AIA for the purpose of eliminating from consideration as much art as possible.

File patent applications that are as complete as possible. In the U.S., it is possible to file a patent application as a “provisional” application. Provisional applications are typically filed when it is important to secure a filing date as quickly as possible (e.g. when a public disclosure by the applicant is imminent but the time remaining is insufficient for preparing a regular, “non-provisional” application). A provisional application may be thought of as a placeholder application with significantly lower government fees. After the provisional application has been filed, the applicant has one year to file a regular application that claims priority from (i.e. benefits from the earlier filing date of) the provisional application.

Provisional applications are not held to the same strict standards of review as regular applications and in fact are not examined by the USPTO. For that reason, applicants sometimes provide only very basic descriptions of their inventions in provisional applications. A possible problem with that approach is that it may be difficult to later prove that all of the details of the invention described in the subsequent regular application are supported by the provisional application. This may limit the applicant’s ability to defeat prior art arising between the filing date of the provisional application and that of the regular application. That could be particularly problematic under the AIA, when it will no longer be possible to defeat prior art by swearing behind it.

Therefore, to the extent possible, it is generally in the applicant’s interest to ensure that provisional patent applications are as complete as possible upon filing.

Think twice about disclosing the invention before a patent application is filed. Under the AIA, there will still be a grace period allowing an inventor who has publicly disclosed an invention to file a patent application within one year of that disclosure. Moreover, under the AIA, if a third party publicly discloses the same subject matter after the inventor’s public disclosure, such third-party disclosure can theoretically be defeated.

However, there is some uncertainty as to what meaning the courts may give to the term “same subject matter.” For example, it is possible that even slight variations in the subject matter disclosed by the third party could be considered to render it no longer “the same” as the inventor’s disclosure. In that case, the third party’s disclosure might be considered legitimate grounds for rejecting the inventor’s subsequently filed patent application.

For that reason — and to preserve the ability to file patent applications in strict absolute-novelty jurisdictions such as Europe — prospective applicants should think twice before publicly disclosing an invention prior to filing a patent application.

Recommendations of the type described above are not new and have generally been considered best practices for managing patent portfolios. With the enactment of the AIA, applying such best practices will be all the more important for obtaining high quality U.S. patents going forward.