First-Inventor-to-File, or First-to-Disclose?—Understanding the America Invents Act

On Sept. 16, 2011, President Obama signed the Leahy-Smith America Invents Act into law. One of the key patent law changes mandated by the legislation is the transition from a “first-to-invent” patent system to a “first-inventor-to-file” patent system.

Under the FTI system currently in place in the United States, the first person to invent a widget is entitled to a patent on the widget, even if a later inventor is the first to apply for a patent on that same widget. To qualify for a patent, the first inventor must be able to demonstrate the fact of his or her earlier invention, such as by “swearing behind” the second inventor’s patent application and establishing conception and actual reduction to practice of the widget before the filing date of the second inventor’s patent application.

Because of this, there is never an absolute certainty that one is entitled to a patent, even after the patent issues. Indeed, an inventor who is the last to file could provoke an interference after a patent issues, and there is always the risk that the second filer could provide evidence that he or she conceived of the invention first and is actually the true inventor.

When the United States shifts to a FITF patent system on March 16, 2013, however, the date of invention will no longer be central to patent examination. This is because the AIA eliminates the ability of a later filer to antedate the application of the first filer by demonstrating earlier invention. Instead, examination will focus on filing dates, operating under the basic premise that the first person to apply for a patent on a widget will be entitled to the patent.

The change is meant to harmonize the U.S. patent system with the majority of countries in the world utilizing first-to-file systems. Yet, as is often the case when statutes are amended or replaced entirely, the new rules are neither simple nor clear.

Consider this simple scenario:

• Inventor A invents on March 1, 2013;

• Inventor B invents on March 3, 2013;

• Inventor B files a patent application on March 17, 2013; and

• Inventor A files a patent application on April 1, 2013.

Under pre-AIA law, Inventor A could demonstrate earlier invention and receive the patent, even though Inventor B was the first to file a patent application. Under the AIA’s FITF system, however, Inventor A’s earlier invention is irrelevant, and Inventor B would receive the patent by virtue of his earlier filing date.

But what if Inventor A also fully (that is, in the manner required by 35 U.S.C. §112) described the invention in a paper published on March 10, 2013? In a strict first-to-file system, such as in Canada and Europe, Inventor A’s publication would be prior art against both applications, and neither Inventor A nor Inventor B could obtain a patent.

The AIA, however, does not establish a strict first-to-file system. Instead, much like pre-AIA law, new 35 U.S.C. §102(b)(1) provides a one- year “grace period” to file a U.S. patent application following certain disclosures.

If a “disclosure is made 1 year or less before the effective filing date of a claimed invention,” it “shall not be prior art to the claimed invention under subsection (a)(1) if—(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

In addition, new 35 U.S.C. §102 (b)(2)(B) removes the use of disclosures in patents and applications as prior art if “the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

Thus, in the modified scenario above, although Inventor A’s article remains prior art to Inventor B’s application, it is not prior art to Inventor A’s application because it falls within the one-year grace period of 35 U.S.C. §102(b)(1)(A). Nor is Inventor B’s application prior art to Inventor A’s application, because Inventor A’s disclosure preceded Inventor B’s filing date. See new 35 U.S.C. §102(b)(2)(B). Therefore, even though Inventor A was second to file his patent application, he can still receive a U.S. patent by virtue of being the first to disclose the invention.

For new applications filed on or after March 16, 2013, or continuation-in-part applications filed on or after March 16, 2013, claiming subject matter not previously disclosed, if there are no prior disclosures of the claimed invention, then the applicant with the earliest effective filing date wins. As the second scenario above demonstrates, however, where there are disclosures prior to applications being filed, the first inventor to disclose can potentially receive a U.S. patent, provided his or her application is filed within one year of disclosure and otherwise meets the requirements of patentability.

Clarification Needed

If the AIA truly establishes a “first to disclose” system, then it is necessary to understand what constitutes a “disclosure.” Current 35 U.S.C. §102(a) and (b) do not use the word “disclosure” with respect to prior art. Instead, prior art is defined as an invention being patented, described in a printed publication, known or used by others, or in public use or on sale.

Nor does new 35 U.S.C. §102(a) use the term. Indeed, it only refers to anticipatory prior art as consisting of the claimed invention being “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”

The legislative history provides some guidance as to the meaning of “disclosure.” According to Sen. Patrick J. Leahy (D-Vt.), Congress “intend[ed] that if an inventor’s actions are such as to constitute prior art under subsection 102(a), then those actions necessarily trigger subsection 102(b)’s protections for the inventor and, what would otherwise have been section 102(a) prior art, would be excluded as prior art by the grace period provided by subsection 102(b).” 112 Cong. Rec. S1496 (daily ed. Mar. 9, 2011).

In other words, Leahy’s view seems to be that if something can be used against an inventor as prior art under new Section 102(a), then it must also be considered a disclosure that triggers the one-year grace period under new Section 102(b). It remains to be seen if Leahy’s view will be adopted by the Patent and Trademark Office or the courts. For now, it is not clear to whom a disclosure must be made, or what information the disclosure must contain, in order to qualify for one of the exceptions under new Section 102(b).

Another question raised by the AIA concerns the outcome where Inventor A discloses his invention before filing a patent application, while Inventor B discloses a slight variation of Inventor A’s invention in the interim. By its terms, new 35 U.S.C. §102(b)(1)(B) only protects Inventor A against disclosure of the same “subject matter” by another. In this scenario, however, Inventor B has not disclosed the same subject matter, but rather has disclosed an obvious variation of the claimed subject matter. As a result, one could argue that Inventor A cannot avail himself of the protections of new Section 102(b), allowing Inventor B’s disclosure to be used as prior art to reject Inventor A’s claimed invention as obvious under 35 U.S.C. §103.

Conclusion

New 35 U.S.C. §102(b) essentially establishes a first-to-disclose, rather than a pure first-to-file, regime. Of course, the inventor must still file a patent application within one year of the disclosure to enjoy the protections of new Section 102(b). Moreover, the earlier disclosure will only protect the inventor in the United States; in most other countries, including pure first-to-file countries, the disclosure will likely act as a novelty-defeating reference. Thus, if an inventor is concerned about obtaining patents in countries other than in the United States, the inventor should consider filing at least a provisional application whenever a non-patent disclosure is contemplated.

By establishing an effective filing date, a provisional application would also provide protection against intervening references being used as prior art under 35 U.S.C. §103. Therefore, until clarification of the interplay between new Sections 102(a) and 102(b) is provided, the more prudent plan of action is to file provisional applications, rather than to rely on non-patent public disclosures, even for applicants who are only concerned with U.S. patent rights.