The America
Invents Act (AIA) largely closes the gap between the U.S. patent laws and those
of the rest of the world, where the general rule is that absolute novelty is
required to seek patent protection for an invention. Under the new U.S. rules (which will apply to
all applications having an effective filing date after March 16, 2013), if an invention is made available to the
public or on sale – anywhere in the world – before the effective filing date of
a patent application, then no patent protection may be sought for the
invention. (Under our existing law, use
or sale in a foreign country does not necessarily invalidate a patent.)
Additionally,
a patent will not be granted to a second inventor to file a patent application
if another inventor has already filed a patent application and such patent
application matures into a patent or is published. This is the first-to-file rule that applies almost everywhere else in the world. However, to preserve the “grace period” that is deeply enshrined
in the U.S. system, there are some exceptions, which can be explained by the
following illustration:
Under
our new system (for filings after March 16, 2013), A will still be entitled to a patent, despite an earlier
disclosure and an earlier filing by another (B) because of the AIA’s exceptions
to the first-to-file rule.
The
first exception (section 102(b)(1)) is that your own public disclosures will
still not count against you so long as you file within one year. (This will also be true if the earlier
disclosure was by someone who derived the invention from you.) Likewise, disclosures by others – even
independent discoveries – will not count against you, if your own disclosure
precedes the other disclosure (and again you file within a year). Thus A can overcome both his own earlier
disclosure and B’s earlier disclosure by virtue of the first exception.
The
second exception is also applicable to this scenario. Under section 102(b)(2), the second to file
can overcome an earlier filing by another, if the second filer made a public
disclosure prior to the first applicant’s filing date. Hence A can
overcome B’s earlier filing date because his or her disclosure preceded B’s
filing date.
Thus,
our new system is commonly being referred to as a “first inventor to file”
system, but it might also be called a “first
to file or publish” system.
- Tom Engellenner
This
advisory is for information purposes only and should not be construed
as legal advice on any specific facts or circumstances. Under the rules
of the Supreme Judicial Court of Massachusetts, this material may be
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