Congress Brings First-to-File Patent System to the U.S.

By Bruce Sunstein and David Blau, members of our Patent Practice Group

The Senate’s passage of the “America Invents Act” ushers in a major overhaul of United States patent law. Signing the bill into law on September 16, President Obama predicted it would promote innovation and speed the issuance of patents, resulting in new businesses and new jobs.

Yet, for many inventors and their lawyers, expedited patent prosecution is not the most striking change. The new law will bring the United States into line with patent systems of other countries by awarding a patent for an invention to the first to file an application instead of to the first to invent. The law introduces new procedures for challenging the validity of patents, both before and after issuance, including a special provision for post-grant review of any “covered business method patent.”

The law makes it easier for smaller inventors to file applications for patents, and defines a new “micro entity” for this purpose. And other provisions will change, in big ways and small, how patent owners, inventors, and patent practitioners interact with the Patent and Trademark Office.

First Inventor To File

Effective 18 months after signing of the legislation, our present first-to-invent system will be replaced by a first-to-file system. Subject to one narrow exception, the new system eliminates the one-year grace period, enjoyed by inventors under the present system, within which to get on file after a publication of the invention or an offer for sale of a product or process embodying the invention.

Thus, for example, an inventor who puts his invention into public use or on sale, anywhere in the world, without having filed a patent application, immediately loses his rights to obtain a patent in the United States (as well as in almost all foreign countries). A one-year grace period remains only for a publication of the invention by or through the inventor. The inventor has no grace period if a third party publishes the invention ahead of his filing date, unless the content of the publication is traceable to the inventor.

As between two inventors who develop the same technology and file applications to patent it, the one who files first will get the patent. It will no longer do any good for the second-to-file inventor to produce a notebook proving an earlier date of invention. The application filing date determines the rights.

Under the new regime, when a given patent application is filed, a previously filed application constitutes prior art for all purposes, even though the previously filed application was not published when the given application was filed. This rule is harsher than that of the European patent system, under which an application previously filed but unpublished as of the filing date of the given application can be cited as prior art for purposes of a rejection based on lack of novelty but not for a rejection based on lack of an inventive step (called “obviousness” in the United States).

On the other hand, another provision has the effect of shielding a company from a rejection of its patent application based on any previously filed applications of the company that were unpublished as of the date of filing of the given application. This provision suggests that companies might well consider filing successive applications with a view to the publication date of previously filed applications. [Read the full article]