Patent Law | Expert Legal Commentary
February 25, 2013
America Invents Act: First-to-File Priority for Patent Applications Begins March 16
Leahy-Smith America Invents Act of 2012
Tom Zuber, Jeff Zuber and Mark Bloomberg of Zuber Lawler & Del Duca
The Leahy-Smith America Invents Act (“AIA”) will be fully implemented on March 16, 2013. Since its passage, the provisions of the AIA have come into effect in stages. The important first-to-file change takes effect on patent applications filed after March 16. As first-to-file replaces the current first-to-invent regime, inventors must be ready for significant changes in their patent prosecution strategies. This article describes some of the major changes already in force and soon to begin, and urges technology-focused counsel and clients to move quickly to reassess patent-related legal strategies in the context of the AIA, if they have not already done so.
First-to-File Starting March 16, 2013
The AIA’s first-to-file provisions will take effect on March 16, 2013, replacing the current first-to-invent regime. Under the AIA’s first-to-file system, priority to a patent is given to the first inventor to file. However, the AIA provides several limitations that prevent disclosures made before the filing for a patent from defeating the patent.
One-Year Grace Period for Inventor’s Own Disclosures
Inventors have a one-year grace period, where an inventor’s disclosure made within one year of the filing date of a patent application will not be considered prior art if the inventor made the disclosure under 35 U.S.C. 102(b)(1)(A). A disclosure can be any form of prior art, which includes publications about the invention, offers for sale, and public statements.
Third-Party Disclosures and the Myth of “First-to-Publish”
Also under §102(b)(1)(A), disclosures made by third-parties who “obtain the subject matter directly or indirectly from the inventor” within the one-year period will also not be considered prior art. For example, if a third-party obtains the subject matter from the inventor and discloses it, that disclosure will not be considered prior art if published within the one-year grace period. This applies whether the third-party learned about the invention directly from the inventor or indirectly from someone else who learned about the invention from the inventor.
Under § 102(b)(1)(B), if the inventor makes a disclosure within the one-year period before the effective filing date of the patent application, any subsequent disclosures made by third-parties will not be considered prior art if the subject matter of the third-party’s disclosure is the “same” as the inventor’s disclosure. For example, one year before the effective filing date of his or her patent application, the inventor makes a disclosure of the invention. Three months later, a third-party makes a disclosure that has the same subject matter as inventor’s disclosure. Under this exception, the third-party disclosure is not prior art, and inventor’s application can go forward.
Some commentators have called this aspect the “first-to-publish” system, as the law seemingly allows the inventor to make a disclosure to preserve rights to a later-filed patent application. However, because the “same” subject matter is vague and subject to interpretation and argument, parties must be careful in relying on this exception while such standards are finalized in the U.S. Patent and Trademark Office (“PTO”) rulemaking process and the contours of this standard are defined through experience. Even then, there will be some risk that a third-party’s subsequent application will not be found to be the “same.”
Although first-to-file will no longer necessitate interference proceedings to decide inventor priority, the AIA still requires that the filing party must be an inventor. Under the AIA, an inventor can challenge a third-party’s earlier-in-time application in a derivation proceeding. The inventor must allege facts that show that the prior application derived the claimed invention from the inventor and did not have authorization to do so.
The petition must be filed within one year of the date of the first publication of a claim that is at least substantially the same as the inventor’s claim, giving the inventor a limited window to notice such activity and file. The petition will be heard by the Patent Trial and Appeal Board, which will soon replace the Board of Patent Appeals and Interferences. Parties can appeal to the district court or the Federal Circuit.
Four Types of Post-Issuance Review Already in Force
Some aspects of the AIA have already started. Significantly, post-issuance review procedures have changed as of September 2012. Third-parties seeking to challenge a newly issued patent can file a petition for a post-grant review within nine months after the issuance of the patent. The PTO will grant review only if the petition demonstrates that at least one claim is more likely than not unpatentable. Petitioners can challenge validity on any ground, not just on prior patents and publications.
Inter Parties Review
After the initial nine-month period or at the termination of post-grant review, a third-party can petition for inter parties review. The PTO will grant review only if the petition demonstrates a reasonable likelihood that petitioner would prevail on at least one claim. Chief Judge Donald Smith had said that this “reasonable likelihood” standard is akin to a 50/50 chance, whereas post-grant “more likely than not” standard requires over a 50% chance. Unlike post-grant review, petitioners may only rely on prior art patents or printed publications as a basis to challenge patent validity. And unlike the current regime, an inter parties review must conclude within 18 months after commencement (one year limit plus six month extension for cause).
A party is ineligible to petition for an inter parties review if it has already filed a related civil action or if more than one year has passed after service.
Ex Parte Reexamination
Ex parte review is carried over largely as-is from the pre-AIA regime. Both third-parties and the inventor can request ex parte reexamination if they can show that a “substantial new question of patentability” exists. This standard is lower than the “reasonable likelihood” standard in inter parties review. If heard, the proceeding is ex parte, with only the inventor the PTO involved as participants, even if the reexamination was requested by a third-party.
Patent owners (but not third-parties) can request a supplemental examination after issuance, which may protect the patent from being held unenforceable based on references that were known to the applicant, but not disclosed, during the prosecution of the original application. The standard to receive supplemental examination is whether a substantial new question of patentability exists. The PTO reexamines the patentability of the issued claims on the basis of such undisclosed printed publications and patents.
Other Significant Changes Already in Force
Relaxed Oath and Declaration Requirements
Assignees of an invention can apply for a patent without the inventor’s own oath or declaration, paving the way for properly assigned employers to file for patents without the employee being available or willing. This flexibility can be especially important under the AIA’s short windows for disclosures and filing, and employers should ensure that employment agreements contain valid assignments of their employees’ work.
Third-Party Submission of Prior Art
After an inventor files a patent application, third-parties are now able to submit prior art in the form of publications to put the PTO on notice of such material. Inventors seeking patents must now be aware of third-party threats to their applications and may face increasing demands to respond to prior art they did not submit themselves. Likewise, competitors have an opportunity to challenge patent applications before the patent is issued.
Best Mode Requirement No Longer a Defense
Failure to disclose the best mode is no longer a defense in patent validity or infringement matters, and thus patent claims cannot be cancelled, held invalid, or otherwise unenforceable on that basis. Nonetheless, inventors are still required to include the best mode in their applications.
Regulation of Specific Subject Areas: Human Organisms, Tax Strategies
Patent applications on claims directed to or encompassing human organisms are now prohibited. Also, the use of some tax strategies has been deemed to be insufficient to differentiate new claims from prior art.
The AIA’s first-to-file provisions are important to understand because they dramatically change prior patent prosecution practice. Specifically, companies should consider procedures for the release of any public information about a new invention, as such disclosures may start the clock on the one-year grace period. Procedures for timely filing of patent applications and the use of provisional applications to avoid uncertainty about the applicability of the grace period should also be solidified. In litigation, parties considering attacking a competitor’s patent should consider whether to use the PTO’s review procedures, which may be cheaper, have a lower burden of proof, and will be decided by someone with technical expertise. Such moves may also stay litigation in federal court. Inventors, patent owners, and their competitors must pay careful attention to changes implemented by the AIA, and should contact experienced patent counsel to see how the AIA may affect their patent workflow, prosecution, and litigation strategies.
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