FITF Overview
First Inventor To File: Learn How It Works
On March 18, 2013, the United States implemented one of the most important components of the America Invents Act (AIA) by adopting a “first-inventor-to-file” patent system. The new system brings more certainty and objectivity to the patent process. In addition, it brings the United States Patent and Trademark Office (USPTO) in line with other nations and moves us closer to a harmonized global patent system.
Keep in mind:
- First-inventor-to-file applies to applications filed after March 16, 2013. Any application filed prior to March 16 will be examined under the previous first-to-invent rules.
- Patent applicants still must sign an oath asserting that they are the true inventor of the invention claimed in their application. Only a true inventor (or an agent or attorney acting on the true inventor’s behalf) can file for patent protection on the claimed invention.
Overview
Section 3 of the America Invents Act moves the United States from a first-to-invent system to a first-inventor-to-file system. While the applicant must still be an inventor of the claimed invention, it is no longer required that the inventor be the first true inventor, but rather only the first inventor to file or publicly disclose the invention. No longer will the date of invention/conception be the key date in determining patentability. The purpose of the change is to place the U.S. in harmony with other developed countries, which utilize some form of the first-to-file system, while ensuring the individual who obtains a patent is a true inventor.
The new provisions allow for an inventor to obtain a patent unless, before the effective filing date of the claimed invention, the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public. Unlike the first-to-invent system, prior public use or sale can occur in any country, not just the United States. Subject to the exceptions discussed below, no patent will be granted to an inventor who files a patent application after another inventor has filed an application, even if the second filer invented the claimed invention before the first filer. The America Invents Act has put a procedure in place (derivation proceeding) to ensure the individual obtaining the patent is a true inventor of the claimed invention and did not derive the invention from another.
There are two exceptions to the first-inventor-to-file system. First, a public disclosure will not bar patentability if, within one year of the effective filing date of the application, the disclosure was made by the inventor or another who obtained the disclosed subject matter from the inventor. Second, another party’s public disclosure before the effective filing date of the application will not bar patentability if, before the disclosure, the disclosed subject matter was made public by the inventor or another who obtained the subject matter from the inventor. Essentially, these exceptions allow the inventor, by being the first to publicly disclose the invention, to bar all others from obtaining a patent. This public disclosure will not jeopardize the inventor’s/discloser’s rights as long as an application is filed within one year of the disclosure.
The two exceptions lead some to say the first-inventor-to-file system created by the America Invents Act is actually a first-inventor-to-file-or-publicly-disclose system. While a public disclosure will protect the rights of the inventor in the United States, it likely will bar the granting of a patent in foreign countries that require absolute novelty.
As before, a patent will not be granted on a claimed invention if the differences between the claimed invention and the prior art are such that the claimed invention would have been obvious before or at the time of the effective filing date to a person of ordinary skill in the art.
First Inventor to File: Rules and Examination
Guidelines
First Inventor to File: Goals
• Provide guidance to examiners and the public on changes to examination practice in light of the AIA
• Address examination issues raised by the AIA
• Provide the Office with information to readily determine whether the application is subject to the AIA’s changes to 35 U.S.C. 102 and 103
Date
• Effective Date: March 16, 2013
35 USC 102(a) Prior Art
• Precludes a patent if a claimed invention was, before the effective filing date of the claimed invention:
• Patented;
• Described in a Printed Publication;
• In Public Use;
• On Sale; or
• Otherwise Available to the Public
• Generally corresponds to the categories of prior art in pre-AIA 35 U.S.C. 102(a) and 35 U.S.C. 102(b)
Sales
• AIA does not state whether on sale activity must be public to constitute prior art
• USPTO seeking public comment on the extent to which public availability plays a role in “on sale” prior art
35 U.S.C. 102(b): Exceptions
• Provides that certain “disclosures” shall not be prior art
• Disclosure is understood to be a generic term intended to encompass the documents and activities enumerated in AIA 35 U.S.C. 102(a)
Grace Period Inventor and Non-inventor Disclosure Exception
• Grace period exceptions under 35 U.S.C. 102(b)(1) for prior art under 35 U.S.C. 102(a)(1)
• 35 U.S.C. 102(b)(1)(A):
– A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if:
• The disclosure was made by:
– the inventor or joint inventor; or
– another who obtained the subject matter directly or indirectly from the inventor or joint inventor
Example 1: 102(b)(1)(A) Exception
July 2013 to July 2014: Smith publishes
June 2014: Smith files
• Smith gets the patent because Smith’s publication was by Smith within a year of filing
• Inventor Smith: “That is my disclosure”
Example 2: 102(b)(1)(A) Exception
July 2013 to June 2014: Taylor publishes Smith’s subject matter
July 2014 : Smith files
• Smith gets the patent, if Smith shows the subject matter disclosed by Taylor was obtained from Smith
• Inventor Smith: “That disclosure originated from me”
Grace Period Intervening Disclosure Exception
• Grace period exceptions under 35 U.S.C. 102(b)(1) for prior art under 35 U.S.C. 102(a)(1)
• 35 U.S.C. 102(b)(1)(B):
– A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if:
• The subject matter disclosed was, before such disclosure, publicly disclosed by:
– the inventor or joint inventor; or
– another who obtained the subject matter directly or indirectly from the inventor or joint inventor
Example 3: 102(b)(1)(B) Exception
July 2013 to June 2014: smith Publishes and Taylor Publishes
July 2014: Smith Files
• Smith gets the patent if the subject matter of Taylor’s publication is the same subject matter of Smith’s publication.
• Inventor Smith: “I publicly disclosed the subject matter first”
35 U.S.C. 102(a)(2): Prior Art
• Precludes a patent to a different inventive entity if a claimed invention was described in a:
• U.S. Patent;
• U.S. Patent Application Publication; or
• WIPO PCT Application Publication that was effectively filed before the effective filing date of the claimed invention
• Generally corresponds to the categories of prior art in pre-AIA 35 U.S.C. 102(e)
Effective Prior Art Date: Definition
• Effective prior art date of subject matter in patents and published applications under AIA 35 U.S.C. 102(a)(2) is:
– actual filing date of the patent or published
application, or
– date to which the patent or published application is entitled to claim a right of priority or benefit under 35 U.S.C. 119, 120, 121, or 365 which describes the subject matter
Non-inventor Disclosure Exception
• Exceptions under 35 U.S.C. 102(b)(2) for prior art under 35 U.S.C. 102(a)(2)
• 35 U.S.C. 102(b)(2)(A):
– A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if:
• the disclosure was made by another who obtained the subject matter directly or indirectly from the inventor or joint inventor
Intervening Disclosures Exception
• Exceptions under 35 U.S.C. 102(b)(2) for prior art under 35 U.S.C. 102(a)(2)
• Exception 2 (35 U.S.C. 102(b)(2)(B)):
– A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if:
• the subject matter disclosed was, before such subject matter was effectively filed, publicly disclosed by: –the inventor or joint inventor; or
–another who obtained the subject matter directly
or indirectly from the inventor or joint inventor
Commonly Owned Disclosure Exception
• Exceptions under 35 U.S.C. 102(b)(2) for prior art under 35 U.S.C. 102(a)(2)
• 35 U.S.C. 102(b)(2)(C):
– A disclosure made in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if:
• the subject matter and the claimed invention were commonly owned or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention
Joint Research Agreements
• Treatment of joint research agreements under Exception 3
• “Common ownership” exception under 35 U.S.C. 102(b)(2)(C) for 35 U.S.C. 102(a)(2) prior art is applicable if:
– claimed invention was made by/on behalf of at least one party to a joint research agreement in effect on/before the effective filing date of the claimed invention;
– claimed invention was made as a result of activities within the scope of the joint research agreement; and
– application discloses the parties to the joint research agreement
Applicability of AIA’s Prior Art Provisions
• AIA’s FITF provisions apply to any application or patent that contains, or contained at any time, a claimed invention having an effective filing date that is on or after March 16, 2013; or
• AIA’s FITF provisions apply to any application or patent that contains, or contained at any time, a specific reference under 35 U.S.C. 120, 121, or 365(c) to an application which contains, or contained at any time, a claimed invention having an effective filing date on or after March 16, 2013
Applicability of Pre-AIA’s Prior Art Provisions
• Pre-AIA 35 U.S.C. 102(g), 135, and 291 apply to any AIA application or patent that contains, or contained at any time, any claimed invention having an effective filing date that occurs before March 16, 2013
Proposed Rule: Affidavits or Declarations
• Proposed 37 C.F.R. 1.130: Applicants may submit affidavits or declarations showing that:
– disclosure upon which a rejection is based was by the inventor or joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor; or
– there was a prior public disclosure of the subject matter by the inventor or joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor
Proposed Rule: Certified Copy Requirement
• Proposed rule 1.55(a)(2): Certified copy of any foreign priority application must be filed within the later of:
– 4 months from the actual filing date; or
– 16 months from the filing date of the prior foreign application
• Certified copy is needed prior to publication since U.S. patents and U.S. patent application publications have a prior art effect under the AIA’s 35 U.S.C. 102(a)(2) as of their earliest effective filing date including foreign priority
Proposed Rule: Required Statements
• Proposed rules 1.55(a)(4), 1.78(a)(3), and 1.78(c)(2): For nonprovisional applications that are:
– Filed on or after March 16, 2013; and
– Claim priority/benefit of a foreign, provisional, or nonprovisional application filed prior to March 16, 2013:
• Applicant must indicate if the application:
– contains, or contained at any time, a claim having an effective filing date on or after March 16, 2013; or
– discloses subject matter not also disclosed in the prior foreign, provisional, or nonprovisional application
• Applicant is not required to:
– identify how many or which claims have an effective filing date on or after March 16, 2013;
– identify the subject matter not disclosed in the prior application; or
– make the second statement if the application does not disclose subject matter not also disclosed in a relied upon application filed prior to March 16, 2013
Proposed Rule: Required Statements Timing
• Proposed rules 1.55(a)(4), 1.78(a)(3), and 1.78(c)(2): Statements must be filed within the later of:
– 4 months from the actual filing date of the later-filed application;
– 4 months from the date of entry into the national stage;
– 16 months from the filing date of the prior-filed application from which benefit or priority is sought; or
– The date that a first claim having an effective filing date on or after March 16, 2013, is presented in the later-filed application