File your patent applications ASAP. First-To-File and the New 102 are coming March 16.

by John Roberts on January 25, 2013

  • U.S. patent law is changing dramatically on March 16, 2013.
  • Patents based on applications filed before March 16 will be awarded to the “first-to-invent.
  • Patents based on applications filed on or after March 16 will be awarded to the “first-to-file.
  • Inventors should file patent applications before March 16 to avoid losing their patent to a later inventor.

The “first-to-invent” rule that has long been the law in the United States.  Under the “first-to-invent” rule, when an inventor conceives of an invention and diligently reduces the invention to practice (by filing a patent application or building the invention), the inventor’s date of invention will be the date of conception.  Thus, provided an inventor is diligent in actually reducing an application to practice, he or she will be the first inventor and the inventor entitled to a patent, even if another person files a patent application, constructively reducing the invention to practice, before the inventor.  Canada, the Philippines, and the United States were the only countries to use this “first-to-invent” system, but Canada and the Philippines switched to the “first-to-file” system used by the rest of the world in 1989 and 1998, respectively.  And now, starting on March 16, 2013, the United States will also be switching from “first-to-invent” to “first-to-file.”

The America Invents Act or AIA was signed into law on September 16, 2011.  It adopted the “first-to-file” system of determining a patent’s priority date, redefined what constitutes prior art against a patent, created several new post-issuance proceedings for patents and revised existing proceedings, and made many other important changes to the patent code.  The AIA is the first comprehensive patent bill to be enacted since the Patent Act of 1952, and it arguably makes the most substantial changes to the law since those imposed by the Patent Act of 1836, which created the system of patent examination.  No part of the AIA is more significant, nor has generated more discussion and debate, than the Act’s changes to 35 U.S.C. § 102.  The bill’s new § 102 adopts the first-to-file system of patent priority, enacts a new definition of “prior art,” and creates a new grace period.  It also includes a slightly modified CREATE Act, and clarifies and codifies the effective date of patents and applications that are cited as prior art.

As described on the USPTO’s website (<<>>), the new § 102 sweeps away a large body of patent law.  All the “loss of right to patent” provisions of pre‑AIA § 102 have been repealed.  Subsections (c), (d), (f), and (g), and the non‑prior-art elements of subsection (b), have been eliminated.  The new § 102 also repeals the swearing-behind grace period of pre‑AIA § 102(a), as well as the English-language requirement of subsection (e).  The AIA combines pre‑AIA subsections (a) and (b) into a hybrid definition of “prior art” that is located at new subsection (a)(1).  This new subsection (a)(1): (1) incorporates pre‑AIA § 102(b)’s inclusion of the patent owner’s own activities, including public commercialization of the invention, as prior art; (2) lifts all geographic restrictions on prior art; (3) makes the patent’s effective-filing date the relevant date for determining what is prior art; and (4) applies pre‑AIA § 102(a)’s public-accessibility standard to restrict the content of what can qualify as prior art.  Pre‑AIA § 102(b)’s one-year grace period is found in the new § 102(b).  In light of the AIA’s repeal of all “loss of right to patent” provisions based on secret activities from § 102, those words have been removed from the title of § 102.

The new § 102(a) is divided into two paragraphs.  Paragraph (1), which consists of the new combination of pre‑AIA §§ 102(a) and 102(b), allows a patent to issue unless there has been a “public disclosure of prior art.”  This prior art can come in any form that makes the invention publicly accessible.  Paragraph (2) allows a patent to issue unless there has been a “patent disclosure of prior art.”  It is substantively the same as pre‑AIA § 102(e), except that the patent’s priority date is its effective filing date, and it no longer includes the requirement that foreign patent applications be published in the English language in order to constitute prior art as of their filing date.  Non‑English-language, U.S.‑designating Patent Cooperation Treaty applications will now be prior art as of when they are effectively filed.

Some may think that, because § 102(f) has been repealed, there is no longer any legal requirement that a patent for an invention be obtained by the inventor.  Not so.  Both the Constitution and § 101 still specify that a patent may only be obtained by the person who engages in the act of inventing.  Indeed, even commentary on the 1952 Patent Act noted, with respect to § 102(f), that “[t]his paragraph is perhaps unnecessary since under § 101 it is ‘[w]hoever invents . . . ’ who may obtain a patent and later sections provide that the inventor must apply for the patent and execute an oath of inventorship.”  Accordingly, this new “first-to-file” system would more accurately be called “first-inventor-to-file.”

The result of all these changes in the law is that the United States is switching from the present “first-to-invent” system to a “first-inventor-to-file” system for patent applications filed on or after March 16, 2013.  This means that for applications filed prior to March 16, if inventor X invents an invention at time 1, and inventor Y invents the same invention at a later time 2, then as long as inventor X was diligent in reducing the invention to practice, he or she will be entitled to patent the invention because he or she was the first-to-invent.  But all that changes starting on March 16.  For applications filed on or after March 16, inventor Y will be entitled to the patent, regardless when he or she invented the invention, if he or she won the race to the patent office and was the first-inventor-to-file.

Accordingly, inventors should be racing to the patent office now, prior to March 16, 2013, to file applications that can be entitled to priority back to the date the inventors first conceived of their inventions.  Otherwise, if inventors wait until after March 16 to file patent applications on inventions they conceived prior to March 16, then they will be stuck with their filing dates as their priority dates, and will have forfeited the right to claim priority back to the earlier dates when they had first conceived of their inventions.

Call Roberts IP Law today at 812-418-3663 to get your patent application in the queue to be drafted and filed prior to March 16, 2013.


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