This is the second of our newsletters to discuss the ‘America Invents Act,’ which was signed into law on September 16, 2011.¬† The Act moves the US patent system away from ‘first to invent’ and to ‘first to file.’¬† So what does ‘first to file’ mean for an inventor or invention-owning business?
The most important practical difference is in the ‘prior art’ that will be cited against your patent or application by the patent examiner or by a court.¬†¬† The changes to section 102 of the patent law discussed below will apply to any patent application filed on or after March 17, 2013.
What is ‘prior art?’¬† An invention must be both ‘novel’ and ‘unobvious’ to qualify for a patent.¬† To determine whether an invention is novel and unobvious, the PTO and the courts will compare the invention to the prior art.¬† The term ‘prior art’ generally refers to things that people have created and that become available to the public, such as patents, published patent applications, treatises, articles, advertisements, web sites, designs, products and the like.¬† For most inventions, the term ‘prior art’ means issued patents and published patent applications.
About one half million patent applications are filed in the U.S. every year, not to mention all the patent filings in other countries around the world.¬† That’s an additional one half million patent applications EACH YEAR that can be ‘prior art’ and potentially may render your invention not ‘novel’ or ‘obvious.’
Bottom Line:¬† Under pre-March 17, 2013 law, the date that prior art is effective is determined by the date that you invented your invention (‘first to invent’).¬† After March 17, 2013, the date that prior art is effective is determined by the date that you filed your patent application (‘first to file’).¬† Since you invented your invention before you filed your patent application, there will be more prior art to cite against your application after March 13, 2013 than before that date.¬† In general and all other things being equal, you will have a better chance of getting and keeping a patent if you file your application before March 17, 2013.
That’s the short form.¬† If you are eager for more, read on.
Nuts and Bolts: For patent applications filed on or after March 17, 2013, the following are ‘prior art:’
1. Publications (including issued patents and published applications) are prior art if they were PUBLISHED before you filed your patent application.¬†¬† BUT, you are protected from the publication if the publication occurs within one year of your filing date AND the disclosure came from you (it’s your application that is published), or someone took the information from you, or you publicly disclose the invention prior to the date of publication.
2.¬† A United States patent application effectively FILED before your filing date becomes prior art when it is eventually published or issued as a patent. BUT, you are protected from the prior filing of the patent application if the disclosure is yours (your patent application) or the information was taken from you, or if the two patent applications are under common ownership or obligation to assign at the time that the second application is filed.
Examples:¬† As in all things patent, it’s complicated, so consider some examples:
1.¬† You file a first patent application on March 17, 2013.¬† You have a second invention that is a follow up to the first.¬† What is the latest date that you can file a second patent application without your first patent application becoming prior art to the second application?¬†¬† Answer:¬† Up to one year after the first application is either published or issued as a patent, whichever happens first.¬† Publication generally will occur eighteen months after your first U.S. filing, so you have a total of up to two and one half years after filing application number 1 to file application number 2.¬†¬† Note that you are not protected from intervening applications or disclosures by other people.
2. You file a patent application on March 17, 2013.¬† The examiner cites a technical treatise published on March 16, 2013.¬† Is the treatise prior art to your application?¬† Answer:¬† Yes, it is.¬† You will be able to overcome the treatise if you can show that the information came from you (you wrote the treatise) or was derived from you (someone wrote about your research) or that you publicly disclosed the invention less than one year before the filing date.
3. You file a patent application on March 17, 2013.¬† The examiner cites a U.S. patent application filed by your competitor on March 16, 2013 and published after your filing date.¬†¬† Is the competitor’s application prior art to your invention?¬† Answer:¬†¬† Yes, unless you can show that the list of inventors is the same, or that the competitor derived the invention from you, or that you publicly disclosed the invention prior to your competitor’s filing date, or that both applications are under common ownership at the time of the second filing date or were the subject of a joint research agreement.
4. You file a patent application on March 17, 2013.¬† The examiner cites a European patent application filed March 16, 2013 and published long after your filing date, but that was never filed as a U.S. patent application.¬† Is the European patent application prior art to your application?¬† Answer:¬† No, it is not.¬† ‘First to file’ only applies to applications that are eventually filed in the U.S, even if the application started out life in another country.
5.¬† You file a patent application on March 17, 2013.¬† The examiner cites a European patent application that was published on March 16, 2013.¬† Is the European application ‘prior art’ to your U.S. application?¬† Answer:¬† Yes, unless you can show that the information is yours (you filed the European application), or the information was taken from you, or that you publicly disclosed the information less than one year prior to your filing date.
Conclusion:¬† Both before and after March 13, 2013, the sooner that you can file your patent application, the better.¬†¬† After March 13, 2013 other reasons to file as soon as possible go into effect, such as less prior art to cite against your invention and avoiding a patent bar.
— Robert Yarbrough, Esq.