February 20, 2013

Major Changes in U.S. Patent Law Coming Soon

Intellectual Property Alert

The United States patent system will soon transition from a first-to-invent system to a first-inventor-to-file system. This change, part of the Leahy-Smith America Invents Act, effective March 16, 2013, brings U.S. patent law into greater harmony with the rest of the world. It will, however, have significant repercussions for inventors and patent owners.

Under the present system, in the United States, a patent is granted to the first person to invent any new and useful process, machine, manufacture, or composition of matter, or an improvement of these. If two inventors independently come up with the same invention and file patent applications for that invention at the U.S. Patent and Trademark Office (USPTO), an interference proceeding can be instituted to figure out who was first.

Under the coming system, a patent could be granted to an inventor who first files a patent application on a new and useful invention, even if that inventor is not the first in time to invent the subject matter. This system clearly encourages the early filing of patent applications. However, if the first filer derived a claimed invention from a second filer, the second filer may be able to institute a derivation proceeding at the USPTO to show that.

The Changing Definition of Prior Art

The transition to a first-inventor-to-file system is brought about by a change in what constitutes prior art to an invention. Under the new definition of prior art, an inventor shall be entitled to a patent unless the claimed invention was, before its effective filing date:

  • Patented,
  • Described in a printed publication,
  • In public use,
  • On sale, or
  • Otherwise available to the public.

Additionally, no patent can be granted to a claimed invention that was described by a different inventor in a:

  • U.S. patent,
  • U.S. published patent application, or
  • international (PCT) published application,

that was effectively filed earlier.

This definition is both a simplification and a broadening of what constitutes prior art. With limited exceptions, any document or activity that is made public before an application's earliest filing date can be used as prior art against an invention claimed in that application. An inventor will no longer be able to "swear behind" a prior art reference. Also, there are no longer any geographic limitations on what constitutes prior art. Thus, the publicly available document or activity can occur anywhere in the world.

Related to this, a US or international patent application is available as prior art as of its priority filing date in another country. What actually constitutes "otherwise available to the public" remains to be seen. There is, however, an indication in the legislative history that no change from the existing standard for determining public accessibility is intended, but interesting situations, unpredictable as of now, may arise.

Notably, an inventor's own secret commercial use, not available to the public, no longer forfeits the right to a patent, the rationale being that the first-inventor-to-file system provides sufficient incentive to file patent applications early; there is no need to additionally penalize an inventor who delays filing for a patent while secretly commercializing an invention to see whether it will be successful.

One-Year Grace Period

There are some exceptions to what constitutes prior art that provide a one-year grace period for an inventor. Thus, an inventor or co-inventor who publicly discloses their own invention still has one year in which to file a US patent application. The grace period also applies if the public disclosure was made by a non-inventor who obtained the disclosure from the inventor(s). However, as is the case now, such a public disclosure will bar the filing of any foreign patent applications on that subject matter.

Prior Commercial Use Defense

The new laws provide a limited defense against patent infringement for the commercial use of certain inventions by others. This defense applies to a commercial use in the U.S. by a person, acting in good faith, of certain process or process-related inventions, either in connection with an internal commercial use or an actual arm's length sale or other commercial transfer of a useful end result of the commercial use. The commercial use must have occurred at least one year before the earlier of either the effective filing date of the claimed invention, or the date on which the claimed invention was disclosed to the public in a manner that qualifies as a prior art exception. This defense is not available, however, against certain university-owned patents.

Strategies for Inventors Now

Inventors should consider filing non-provisional or complete provisional patent applications on new inventions before the March 16, 2013, deadline. This avoids the possibility that another inventor might file an application claiming the same invention first, and it preserves the ability to "swear behind" a prior art reference in some circumstances. Similarly, inventors should consider converting any pending provisional applications to non-provisional applications before March 16.

Strategies for Inventors On and After March 16, 2013

After the March 16 deadline, inventors should consider filing patent applications earlier, perhaps as provisional applications, as soon as a complete, enabling disclosure can be drafted. Multiple provisional applications can be filed during the course of one year from the filing date of the earliest provisional application, and these provisionals can be combined into a single non-provisional application by the one-year anniversary of the earliest provisional application.

If foreign patent rights are of interest, no public disclosure should be made until a patent application has been filed on that disclosure. If foreign rights are not of interest, a public disclosure will constitute a prior art bar against others for what is disclosed, while still allowing the inventor to take advantage of the limited grace period exception for a U.S. application.

To learn more, contact a member of Preti Flaherty's Intellectual Property Group.

Firm Highlights

Publication

Litigation and Arbitration Venue Provisions in Construction Contracts: When and How They Work

Venue and choice-of-law provisions are fairly standard in construction contacts, but can be overlooked due to their location within a contract. When drafted effectively, these provisions can help limit uncertainty about where and how...

Publication

ConsensusDocs vs. AIA - Which Contract Is Best for Contractors?

Choosing the right contract is essential to protecting your rights as a contractor. AIA Contracts have long been the industry standard, but Consensus Docs are fast becoming a reasonable option. In this article, Nathan...

News

Preti Flaherty Welcomes Government Relations Liaison Andrew I. Roth-Wells to the Firm

Preti Flaherty is pleased to announce that Andrew I. Roth-Wells has joined the firm as a Government Relations Liaison. Andrew will help manage legislative and regulatory advocacy efforts for the firm’s Government Affairs Team...

Event

2020 Employment Law Series: A Legislative Update for HR Professionals

For more than 25 years, Preti Flaherty's Employment Law Group has been keeping clients, business partners, and friends up to date on recent developments in employment law. Join us as we continue that tradition...

Event

2020 Employment Breakfast Series: Strengthening Your Company's Management of Accommodation Requests

For more than 25 years, Preti Flaherty's Employment Law Group has been keeping clients, business partners, and friends up to date on recent developments in employment law. Join us as we continue that tradition...

Press Coverage

Maine State Police May Be Spying on You

Police and governments are increasingly turning to new tracking and monitoring methods in their efforts to prevent and record evidence of crimes. A Portland Press Herald investigation examines these expanding law enforcement abilities and the...

Event

2020 Cannabis Law Breakfast - Winter Update

Press Coverage

Bangor superintendent blocked BDN reporter on Twitter after critical news coverage

In an apparent violation of the First Amendment, Bangor schools superintendent Betsy Webb temporarily blocked a journalist on Twitter following a report that news of a student suicide was announced over the loudspeaker at...

News

Preti Flaherty Attorney Benjamin S. Piper Promoted to Partner

Preti Flaherty is pleased to announce that the firm’s partnership has named attorney Benjamin S. Piper as a partner. Ben is a member of the firm's Environmental, Litigation, and Media Law Practice Groups and works...

Publication

The Potential of the Blockchain for Asset Protection Planning

While many legal scholars focus on the challenges and complications seemingly inherent to blockchain and cryptocurrency, others look past the fear and see potential. In this article for Cumberland Law Review , Ian Huyett and Brian Quirk...