The US patent system will change from a first-to-invent system to a first-inventor-tofile system on March 16, 2013. The US Patent and Trademark Office (USPTO) has issued a final set of rules to implement such change. As part of this change, the USPTO will additionally change the grace period for disclosures (“Grace Period”) and the definition of what constitutes prior art. These changes will also go into effect on March 16, 2013.

First-Inventor-to-File System

For many years the United States had been the only country in the world to have a patent filing system based on who is the first to invent a new innovation. Along with this approach, the USPTO maintained an interference practice to address who is the rightful first inventor in cases where two different entities filed patent applications for the same invention. With the passage of the American Invents Act (AIA) in the fall of 2011, the United States changed its system to conform to the patent filing systems existing in the rest of the world which are based upon a first-to-file principle. Namely, it is a “race to the patent office” and the innovation will belong to the inventor who first files regardless of his date of invention.

As the rest of the world has been on a first-to-file system for many years, many US patent filers who were interested in protecting their inventions in foreign countries had already been following a first-to-file practice and getting their applications on file as quickly as possible in order to protect their rights worldwide. However, with the new change to the US system, anyone filing in the United States, even those not interested in any foreign filing, will still have to be the first to file his invention in order obtain protection under the US patent laws.

This change will apply to all patent applications filed in the United States on or after March 16, 2013, or in the case of applications claiming foreign priorities, which have priority dates on or after March 16, 2013. The change will also apply to any application claiming subject matter added to such existing applications, where the claimed subject matter was added after March 16, 2013.

Although the interference practice will no longer exist, to the extent a patent applicant believes that the applicant of a previously filed application derived that invention from such later-filing applicant, there will be a derivation procedure to address this issue.

Grace Period

Another significant change that will go into effect on March 16, 2013, relates to the Grace Period in the United States. Previously, the United States provided a one-year Grace Period for any disclosures. Accordingly, anyone disclosing his invention to seek funding, offer for sale, or any other reason, would still have one year from the date of such disclosure in which he could still file a patent application in the United States. That disclosure would not be used as prior art to bar such filing. In addition, even if any third parties had independent disclosures of such invention, the person first disclosing would be able to overcome such third-party disclosures, as long as the filing was within the one-year Grace Period from such first disclosure.

Furthermore, under the previously existing Grace Period, even in the absence of disclosing, a US applicant would be able to overcome any third-party disclosures within one year of a US filing date by showing that the invention occurred before such third-party disclosure.

All this will change after March 16, 2013. After that date, the US Grace Period essentially becomes a “safety net.” The Grace Period will continue to protect anyone publicly disclosing his invention from having such disclosure cited as prior art as long as a filing is within one year of such public disclosure. The Grace Period will also provide protection for one year by excluding any third-party public disclosure of the invention based upon derivation from such inventor. For example, should a third party abuse some contractual relationship of confidentiality and publish the invention, the applicant would be protected against such derived public disclosure.

However, an inventor publicly disclosing would be at risk for any independent intervening disclosures by third parties. Only if the applicant’s original disclosure was the same subject matter as the later intervening disclosure would the applicant’s original disclosure be able to overcome such intervening third-party disclosure. However, to the extent the intervening disclosure has additional subject matter, or modified subject matter, that intervening disclosure will be considered as prior art against the subsequent filing by the first to disclose.

Accordingly, after March 16, 2013, inventors and applicants should be very cautious about relying on the Grace Period in the United States as it will make them subject to the risk of any intervening independent disclosures which will be held as prior art against them. Caution should therefore be taken to ensure that applications for inventions are filed as quickly as possible before there is any disclosure by way of soliciting funding, scholarly publications, offering for sale, or any other public disclosure. Strong consideration should be given to filing provisional applications before any such public disclosure. Often, such provisional applications can be filed quickly and even at a reduced cost. Also, confidentiality agreements are still useful and to the extent third parties can be relied upon to maintain such agreements, they should be used.

Change in Definition of Prior Art

The other major change that takes place on March 16, 2013, relates to what is considered prior art against the filing of a patent application. One of the main changes is that the United States will become an “absolute novelty” country, which means that any public disclosure anywhere in the world can be used as prior art against a pending patent application. At present, there are geographic limitations to the “on sale” and “public use” type of disclosures, and these limitations will no longer be retained as the United States moves to a “worldwide” prior art system.

Additional prior art changes also relate to the fact that disclosures that are considered prior art must all be “public” disclosures. As a result, any secret use, or secret offers for sale, would not be considered as prior art.

Another major change to what is considered prior art relates to the elimination of what has been referred to as the “in Re Himer” rule. Previously, foreign-originated applications filed in the United States could only be utilized as prior art against other pending US patent applications as of their US filing dates. For those foreign-originated applications filed after March 16, 2013, to which the new AIA law will apply, those foreign-originated patent applications will be used as prior art as of their foreign priority dates.

Similarly, Patent Cooperation Treaty publications will be used as prior art as of their international application dates or, if they claim priority, as of their priority filing dates, regardless of the languages in which they have been published.

Recommendations

Based upon the changes that are going into effect, the following actions are recommended:

  • To the extent possible, inventions that are complete should be filed before March 16, 2013, in the United States and/or in foreign countries, where applicable.
  • After March 16, 2013, new inventions should be filed as quickly as possible, even if provisional application filings would be necessary.
  • After March 16, 2013, an inventor should not rely upon the grace period in the United States but, to the extent possible, an application should be filed before any public disclosure of an invention.
  • To the extent any disclosure of the invention is necessary before filing, even with confidentiality agreements, accurate records and evidence should be kept of such disclosure, including when, where and to whom such disclosure took place, should it be necessary to prove derivation.