Patentability of Your Inventions May Hinge on Filing before March 16, 2013

The changes to the United States patent system brought about by the America Invents Act (AIA) are numerous and significant. Perhaps the most significant changes will begin on March 16, 2013. On this date, a principle distinguishing aspect of patent law in the United States will be replaced. Patents based on applications filed on or after March 16th will be awarded to those inventors who are the first-to-file, rather than first to invent. This affects not only the determination of priority for competing inventions (i.e., who wins the patent right when two or more inventors claim the same invention), but also the prior art applicable against claims of patents and patent applications. As a result, an invention that could be patented under the current law may be unpatentable if filed on or after March 16th.

There Will Be More "Prior Art" Available for Use in Rejecting Patent Claims in Applications Filed on or After March 16, 2013

With one or two exceptions, the AIA greatly expands the scope of materials qualifying as "prior art" against the claims of a U.S. patent or patent application. Some of the more significant changes are:

  • The effective date of a "prior art" patent or patent application will be its earliest effective filing date anywhere in the world. Thus, foreign-originated US patents and patent applications will be prior art as of their first filing dates abroad.
  • "Public use" and "on-sale" activity can be prior art regardless of where that activity took place, i.e., the "public use" or "on-sale" need no longer have occurred in the United States.
  • An as of yet not well defined catchall category has been added for material that is "otherwise available to the public". This is likely to be the subject of much litigation.
  • While the new law continues to contain a one-year grace period measured from disclosure of the invention to filing of a patent application for certain types of disclosures, this has been restricted to encompass only those disclosures made by the inventor, or made using the information obtained from the inventor.
  • It will no longer be possible to "swear behind" a prior art date using an affidavit or declaration to show an earlier date of invention.

Opportunities to Get Saddled With the New Provisions are Plentiful

The first-to-file provisions will apply to patent applications that claim an invention with an effective filing date on or after March 16, 2013. This has been interpreted by the United States Patent & Trademark Office (USPTO) to encompass any application filed on or after March 16, 2013 that has at least one claim with an effective filing date on or after March 16, 2013. That is, the entire application will be examined and subjected to the new first-to-file rules of the AIA. Even if that single claim was later canceled by the applicant, the remaining claims (all of which could be entitled to an effective filing date prior to March 16, 2013) would continue to be examined and subjected to the first-to-file provisions. Moreover, once the first-to-file provisions are triggered, all continuations, divisionals or continuations-in-part of the triggering application will also be examined under the new rules. The following patent prosecution scenarios represent situations potentially vulnerable to triggering the first-to-file provisions.

  • A provisional patent application is filed in the United States before March 16, 2013, and a U.S. non-provisional application is filed on or after March 16, 2013 containing at least one claim newly added and not supported in the prior provisional filing.
  • A U.S. national stage application or bypass continuation is filed on or after March 16, 2013 having at least one claim that contains subject matter that is arguably newly added relative to the content of the original patent application or Patent Cooperation Treaty (PCT) international application filed prior to March 16, 2013.
  • A Continuation-in-Part (CIP) is filed on or after March 16, 2013 that includes at least one claim arguably directed to new matter added in the CIP.

Actions to Consider Now

As a result of the significant changes coming on March 16, 2013, a number of steps should be considered by patent owners now to minimize the potential impact. These may include:

  • Reviewing invention disclosure inventories and applications in-progress should be reviewed, and file non-provisional applications or complete provisional applications with robust disclosures prior to March 16, 2013.
  • Provisional applications that have already been filed should ideally be converted to U.S. non-provisional applications or PCT applications designating the U.S. prior to March 16, 2013.
  • Contemplated Continuation-in-Part applications should be filed prior to March 16, 2013. In addition, it may be prudent to consider filing contemplated Continuation or Divisional applications as well. By doing so, a situation where new matter is inadvertently or allegedly added in a continuation or divisional would not trigger the first-to-file rules for the application in question and any subsequent continuing applications claiming the priority of that case.
  • Going forward, applicants will want to reevaluate and optimize procedures to function within the first-to-file environment. This may include use of greater numbers of provisional application filings to establish a filing date for key technologies during their development.

There Remain Other Ambiguities

To complicate matters, the rules for processing and treatment of applications are still not finalized. Proposed USPTO rules and guidelines for implementing the the first-to-file portion of the AIA changes were published July 26, 2012, and in October 2012, the USPTO extended the time period for comment on the proposed guidelines until November 5, 2012. As of this writing, these comments are still under consideration and final rules have not been promulgated. Although it is not expected that the final rules will differ significantly from the proposed rules, there will likely be differences. Those differences may impact the appropriate stragies taken to obtain a patent under the new provisions.