Among the most controversial changes introduced by the America Invents Act (AIA) is the switch from a first-to-invent system to a first-to-file system. Yet the AIA does not provide a clean break with the past: new Section 102(b) provides that certain public disclosures which take place less than a year before filing will now be considered prior art. This includes disclosures made by both the inventors themselves and third parties. Because most have come to rely on the one-year grace period which has existed in US Patent Law for over 70 years, this change requires some modification of best practices in patent prosecution.
First and foremost, the one-year grace period under the new law is not as robust as the one-year grace period under the previous law. Thus, it is important to understand how the new grace period works, and to what extent it can be relied on to protect your inventions.
The AIA’s Section 102(b) provides that certain disclosures shall not be considered prior art. As under the old law, a disclosure made by an inventor less than one year before filing a patent application is not prior art. For example, if an inventor publishes a paper or demonstrates a product less than one year before filing a patent application based on the paper or product, the grace period applies and the disclosure is not prior art. In a marked departure from the old law, however, a third-party disclosure made less than one year before the application filing date is not prior art, if the subject matter of the disclosure was directly or indirectly obtained from the inventor. Thus, in a case where the inventor discloses subject matter to a third party less than one year before the filing date, and the third party subsequently discloses the same subject matter publicly, the third-party disclosure is not prior art.
At first glance, the grace period appears quite similar to the current law. However, certain pitfalls make it risky to rely on the new one-year grace period. With regard to third-party disclosures, the exceptions apply only to disclosure of the same subject matter obtained from the inventor. Conversely, the exceptions do not apply to variations of the subject matter. For example, an inventor could disclose subject matter to a third party and, before the inventor files a patent application, the third party could disclose an invention or idea which includes the inventor’s original idea, but which builds upon or otherwise modifies it. Now, the third party’s disclosure can be prior art with regard to the original inventor’s patent application. Importantly, the original inventor cannot rely on the date of disclosure to the third party to overcome prior art in a first-to-file system.
Patent prosecution strategies must take this problem into account. After March 15, 2013 (the effective date of the AIA), seeking patent protection before publication of an invention will be more important than ever. If an inventor publishes before seeking a patent, a patent application should be filed as soon as possible. The invention date can no longer be relied upon for priority. Of course, the application still must contain a written description of the invention that enables a person of ordinary skill in the art to make and use the invention, and thus one should not rush to the Patent Office with half-baked ideas. Because it is the inventors who provide the information that makes this level of description possible, attorneys should engage inventors at every step of the application writing process and teach them the importance of full, prompt disclosure.
Provisional applications can be a useful tool for establishing an early filing date, but they do not provide an excuse to rush. Simply filing academic papers, white papers, inventor notes or anything else that may be lying around does not necessarily provide protection. A regular patent application based on a provisional application only gets the benefit of the provisional filing date if the provisional application provides enough information to enable a person of ordinary skill to make and use the invention. Therefore, when filing a provisional application, an attorney needs to think about what will be claimed in the regular application. The best way to approach this is to actually write claims and file them with the provisional application, although at minimum the subject matter of eventual claims must be understood. Once this is done, the disclosure must be carefully examined to ensure the claimed subject matter is fully described and enabled by the provisional application.
Patent owners have already lost protection as a result of inadequate provisional applications. In New Railhead Manufacturing v. Vermeer Manufacturing, 289 F.3d 1290 (Fed. Cir. 2002), a patent claim required a drill bit with a bit body attached to an end of a sonde housing and a “unitary bit body being angled with respect to the sonde housing.” The patent owner attempted to rely on the provisional application to establish a priority date. However, the angled relationship of the bit body and sonde housing was not found in the provisional application. As a result, the activities of the patent owner more than a year before the regular application, but less than a year before the provisional application, invalidated the claims of the regular application. The lesson is clear: the safe approach is to prepare a provisional application, taking as much care as one would take in preparing a regular application.
What had been a practical need to file first has become a legal need, but otherwise, much of pre-AIA practice will persist. Inventors should be discouraged from premature publication. Lawyers and inventors should work together to swiftly prepare and file fully enabling applications. By emphasizing best practices, the transition to a first-to-file system can be relatively painless.
Partner Dale Lazar, based in Northern Virginia, counsels on IP matters concerning a variety of technologies. Reach him at [email protected].
Of Counsel Lisa Norton, based in Northern Virginia, focuses on patent issues relating to computer hardware and software. Reach her at [email protected]
Associate Nick Panno, based in Northern Virginia, concentrates on protection of software, hardware, electrical and mechanical IP. Reach him at [email protected].