January 28, 2013

Last Chance for “First-to-Invent” Patent Protection Rapidly Approaches

On March 16, the final provisions of patent reform under the Leahy-Smith America Invents Act of 2011 go into effect, transitioning the United States from a “first to invent” patent system to a “first to file” patent system and broadly expanding the scope of prior art that can be used to reject patent applications filed on and after that date. The impact of these changes should motivate inventors to file new patent applications by March 15 to take advantage of the benefits of the present system.

“First to File” Versus “First to Invent”

Patent regimes around the world presently fall into two categories. “First to file” regimes offer patent protection to the first inventor to file a patent application. “First to invent” regimes offer patent protection to the first person to conceive of the invention and diligently pursue patent protection for it, even if a later inventor filed an earlier patent application for the same invention.

A short example helps to clarify the distinction. John, a wealthy businessman, builds a better mousetrap and deploys a number of prototypes for testing and refinement of the mechanism in his mansion. Martha, a patent attorney, independently conceives of the same mousetrap one month later, files a patent application with the patent office, and issues a press release touting the creation of Better Mousetrap, Inc. and its new patent application. John reads the press release in his study, drafts a patent application of his own, and files it with the patent office one week later.

A “first to file” regime, like the one currently in place in the United Kingdom, would award the patent to Martha, because she was the first to file her patent application. In contrast, a “first to invent” regime, like the one currently in place in the United States, would eventually award the patent to John, because he was the first to invent, even though he was the second to file.

Increased Scope of Prior Art under “First to File”

In addition to transitioning to a “first to file” patent system, the America Invents Act also made several other changes to U.S. patent law, which we have previously discussed here and here. The impending regime change becomes effective on March 16, less than two months from now. Should you take advantage of the “first to invent” regime or wait until after the deadline to file a new patent application?

If the choice between a “first to file” and a “first to invent” system were the only issue you were considering, then the decision whether to press to file your patent application before March 16 could be a close call. While the current “first to invent” system requires the U.S. Patent Office to conduct complex and time consuming interference proceedings to resolve disputes between patent applicants who both appear to be entitled to a patent for the same invention, these proceedings are relatively rare. More often, patent applicants avoid these disputes by altering their claim language, or swearing to their invention date. An important issue that will compel many inventors to file patent applications ahead of the March 15 deadline, however, is the broadened scope of prior art that will be available to reject patent applications filed after that date.

Under current U.S. patent law, there are several categories of activity that are not prior art. For example, if someone in a foreign country developed an identical invention before you and used it publicly or offered it for sale in that country before you conceived of your invention, under the current “first to invent” regime those acts would not prevent you obtaining a patent here in the United States. If that foreign-sold invention had been described in a printed publication, however, the publication itself would be prior art to your later-filed patent application and could prevent you from obtaining a patent. After March 15, this apparently inconsistent approach will change.

Beginning March 16, inventions that are known, used, in public use or offered for sale outside the United States will be available as potentially invalidating prior art against patent applications filed in the United States. Moreover, U.S. patents and patent application publications that originated with a foreign patent application, including international applications filed under the Patent Cooperation Treaty (“PCT”), will now be prior art as of their original foreign filing date, instead of their filing date in the United States. In addition, the U.S. Patent Office will evaluate the issue of obviousness, i.e., whether the prior art as a whole teaches your invention, as of your filing date and not the date of your invention. In a world where differentiating features are rapidly deployed, copied and commoditized, this could be a significant factor in whether or not you can obtain a patent.

These changes, namely the broadened scope of “prior art” and the grant of a patent to the “first to file,” together provide a very good reason to consider filing a patent application by March 15. With that in mind, there are steps that you can take to keep your patent applications under the “first to invent” regime.

Taking Steps to Stay under “First to Invent”

The America Invents Act states that the “effective filing date” of a patent application, for purposes of determining which system applies, is the filing date of the disclosure in the application that supports each claim. If all of your claims are entitled to an effective filing date before March 16, then your application will be processed under the “first to invent” rules. If a single claim in the application has an effective date after March 16, then the entire application will be handled under the “first to file” rules.

The easiest way to retain all the benefits of the “first to invent” regime is to file by March 15 your non-provisional patent application, that is, an application including a full disclosure and claim set. You can also file that application as a provisional and re-file the identical application as a non-provisional a year later to delay the start of the 20-year patent term by one year. Provisional patent applications, which typically include much less disclosure and often omit claims, filed before the deadline may or may not provide the benefits of the “first to invent” regime to subsequently filed patent applications based on the provisional.

Non-provisional patent applications typically are more expensive to prepare, however, and cost is often a factor in determining which type of application to file. There are ways to reduce the risk of a pre-deadline provisional patent application losing the benefits of the current “first to invent” system. For specific advice regarding your patent portfolio or the patent strategy of your portfolio company, please contact the authors or your Goodwin Procter LLP attorney.

Our live briefing on “first to file” and other changes from the America Invents Act can be found here.