America Invents Act: The Rules Are About To Change
Under the America Invents Act (“AIA”), the U.S. Patent and Trademark Office (“USPTO”) is changing from the traditional “first to invent” system and harmonizing with the rest of the world in using a “first inventor to file” system. In its most basic form, the first inventor to file means that if two people separately invent the same invention, and if both file patent applications for the invention, the first person who filed the application will receive the patent. This replaces the current system for determining who the first inventor of the claimed invention was, and applications governed by the first inventor to file system of the AIA will no longer be able to “swear behind” or “antedate” a third-party disclosure by showing prior “conception” and “reduction to practice.” The AIA only applies to new patent applications that have one or more claims that have an “effective filing date” date on or after March 16, 2013. “Effective filing date” means the earlier of the actual filing date or any other priority date; however, there is a transition period for patent applications in which both the old rules and the new rules will be relevant. For example, if a “transition” application (1) is filed on or after March 16, 2013 and claims priority to an earlier-filed application, and (2) does not claim any new subject matter, then the transition application will still be governed by the old first to invent rules. If, however, a patent application (1) is filed on or after March 16, 2013 and claims priority to a provisional (or other) application filed before March 16, 2013, and (2) any claim in the new application contains subject matter that was not disclosed in the priority application, then the transition application will be governed by the new first inventor to file rules. In this latter case, the applicant must file a statement identifying that the application includes new matter in the claims. Further, once even a single claim that has an effective filing date on or after March 16, 2013 is presented, the application will be governed by the first inventor to file rules of the AIA, even if that claim is later canceled. Another major change under the AIA is the scope of what is considered to be prior art. For example, sales and public uses which occur in the U.S. are currently considered prior art. Under the AIA, these activities are no longer limited to the U.S., but instead sales and public use activities occurring anywhere in the world may constitute prior art. In addition, U.S. patents and patent application publications, as well as PCT publications designating the United States (in any language), are available as prior art under the AIA as of their effective filing date, which can include a foreign priority date if appropriate support and other requirements are satisfied. Moreover, a secret (non-public) sale or use activity does not qualify as prior art under the AIA. With some limited exceptions, a one-year grace period remains under the AIA, but it is personal to the inventor and does not cover third-party disclosures, unless the inventor can show that the third-party disclosure was derived from the inventor. If the inventor asserts that the prior art was derived from the inventor, then an affidavit must be submitted explaining how the third-party obtained the information from the inventor. An intervening disclosure published after an inventor’s public disclosure and before the effective filing date of the inventor’s application can be removed as prior art if the “subject matter” of the disclosures is the same, but these exceptions do not apply if the only differences between subject matter of the disclosures contain “mere insubstantial changes, or only trivial or obvious variations.” Given this, inventors should keep records of public disclosures made prior to filing a patent application and during the period between filing a provisional and non-provisional application. Such records can include requiring laboratory notebooks, lists of attendees at public disclosures, photographs, etc. Similar to sales and public use activities, the AIA expands the scope of prior art to include any disclosure anywhere in the world. One exception to the expanded scope of prior art is that if the inventor disclosed the invention within one year prior to filing the patent application, then the inventor’s prior disclosure may disqualify later publications by others as prior art, but this publication could still bar international patent protection in those countries that do not offer a grace period. In the case of early disclosure, the inventor will be required to submit an affidavit that identifies the subject matter that he/she previously disclosed, along with the date of the prior disclosure, and if the prior disclosure was a publication, then the inventor must provide a copy of the publication. Under the AIA in certain circumstances, common ownership or joint research agreements can overcome anticipation as well as obviousness rejections, whereas under the first to invent system, only obviousness rejections could be overcome. Further, the common ownership or joint research agreements provisions under the AIA are based on the time of filing the patent application, rather than at the time of the invention under the pre-AIA rules. A practical effect of these rule changes under the AIA is that those who are considering a patent should not delay filing and may wish to file any applications by March 15, 2013. Also, entities should optimize their processes for capturing inventions as soon as possible, and should timely review invention disclosures to determine whether patent protection is desired. These are just a few of the AIA rule changes. If you want additional information on the numerous new rules of the AIA, please contact an HJK attorney.