New First to File (or Publish) Rules for US Patents

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

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