America Invents Act
Patent Law

First-To-File Patent Law Is Imminent, But What Will It Mean?

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Editor’s note: Leonid (“Lenny”) Kravets is a patent attorney at Panitch, Schwarze, Belisario and Nadel, LLP in Philadelphia, PA. Lenny focuses his practice on patent prosecution and intellectual property transactions in computer-related technology areas. He specializes in developing IP strategy for young technology companies and blogs on this topic at StartupsIP. Follow Lenny on Twitter @lkravets.

One of the main changes resulting from the passage of the America Invents Act (AIA) is the transition of U.S. patent law from a “first-to-invent” system to a “first-to-file” system on March 16. With the transition a mere four weeks away, it is important to understand what this change to the patent system means for inventors and companies.

First-To-Invent

Before addressing first-to-file, it is important to understand how the first-to-invent system, which we’ve operated under for the last 200 years, works. Under the first-to-invent system, when two or more inventors file a patent application for the same invention, the patent office should identify and award the patent to the inventor who was first to conceive and diligently reduce the invention to practice, even if (subject to some limitations) the first inventor was not the first to file a patent application. An example helps illustrate this system:

gp-patent1

In this scenario, inventor A would be entitled to receive the patent on her widget even though inventor A filed her patent application after inventor B. Inventor A may need to “swear behind” inventor B’s patent application by showing documentation regarding her earlier invention date of the widget, and that she diligently worked to actually or constructively “reduce the invention to practice” (constructive reduction to practice can be shown by preparing and filing the patent application). Under the first-to-invent system, inventor B would not receive a patent on the invention.

First-To-File

The first-to-file system being implemented on March 16, 2013, attempts to further harmonize U.S. patent law with that of most of the rest of the world by de-emphasizing the actual invention date.

A lot of informed people think that the change to first-to-file will be a boon to patent trolls because they will be able to file patent applications on inventions released, but not yet filed on, by underfunded startups. However, the term “first-to-file” is a bit of a misnomer. In the United States, whether under first-to-invent or first-to-file, an inventor can publicly disclose their invention, such as in a blog post, and still file a patent application within one year of that public disclosure.  The system being implemented under the AIA is not a true first-to-file system as in most foreign countries because this grace period on public disclosure will remain. Thus, the new system can really be considered a “first-to-disclose” system.

The new system can really be considered a “first-to-disclose” system.

Inventors can attempt to market and sell their inventions and still file for a patent in the United States within one year of the first public disclosure. However, they would not be able to pursue patents for the previously disclosed invention in most foreign countries, because foreign countries that operate on the first-to-file standard typically do not have this grace period for public disclosure. In these foreign countries, a public disclosure prior to filing a patent application is an absolute bar on receiving a patent on the disclosed invention.

Taking the disclosure grace period into account, under the first-to-file/first-to-disclose system being implemented on March 16, the key question to consider is not when an invention was first conceived as in the first-to-invent system, but rather when the invention was first publicly disclosed by another inventor or first filed with the USPTO. Thus, while an inventor can publicly disclose his invention and still file a patent application with the USPTO within one year of the disclosure, that disclosure would prevent any other inventor from receiving a patent on the same invention, even if the other inventor invented the same invention before the disclosure.

Similarly, if no previous disclosure was made, a filing at the USPTO by a later inventor would entitle that later inventor to a patent even though a second inventor came up with the invention earlier than the second inventor’s filing date. An example will better illustrate this scenario:

gp-patent2-1

In this scenario, Inventor B would receive the patent, even though inventor A came up with the invention for the widget first. Inventor A would therefore be prohibited from practicing the invention patented by inventor B even though he came up with the invention before Inventor B did.

Now consider a second, somewhat modified scenario:

gp-patent3

In this modified scenario, Inventor A would be entitled to the patent even though Inventor B filed his patent application first because Inventor A disclosed the invention before Inventor B filed his patent application.  Therefore, because Inventor A filed the patent application within one year of his public disclosure, Inventor A will be entitled to receive the patent. Inventor B would therefore be prohibited from practicing the invention patented by Inventor A.

In the case that a person learns of an invention that another inventor disclosed, copies the idea and attempts to file a patent application under first-to-file, the copier could not receive a valid patent on the invention by simply filing the patent application first because he did not “invent” the invention and is therefore not entitled to receive patent protection (though if the USPTO grants a patent to a non-inventor, the burden of proof would be on the other party to show that the non-inventor was not the true inventor of the patented technology).

Similarly, the non-inventor could not prevent the inventor from receiving a patent by publicly disclosing the invention based on information obtained from the inventor because in this case, the inventor will still retain the one-year grace period to file a patent application on the invention.

Preparing For First-To-File

There are a number of ways companies can prepare for the implementation of first to file. While it is always best to file patent applications as soon as possible, prior to implementation of first-to-file, companies should consider whether provisional applications should be filed to secure first-to-invent filing dates. Companies should also develop processes for quickly identifying inventions, and deciding whether to patent, disclose or otherwise protect those inventions.

Filing a provisional or non-provisional patent application with the USPTO prior to March 16 is the only way to ensure that the application will be treated under the first-to-invent regime. While it is preferable to file non-provisional applications to ensure that the claims of the patent application are fully supported by the description in the specification, if budget and timing does not allow for a non-provisional application to be filed by March 16, great care should be taken in preparing provisional applications (which do not require claims) to ensure that the invention and any known variations are disclosed in full detail.

It is important to take great care to fully describe the technology and all known variations in detail, because if the provisional application is converted after the March 16 changeover date, any claim directed to disclosure that was not supported by the original “first-to-invent” provisional application will be treated under the first-to-file regime.

After its implementation on March 16, first-to-file will present unique challenges and opportunities for inventors and businesses. Well-timed disclosures of inventions can block better-funded competitors from receiving patents. However, delaying the patent application or disclosure process can result in forfeiting of patent rights by exposing the application to more prior art. Even worse, delaying disclosing or filing a patent application can allow a competitor to file a patent application on the same technology even though they invented it later.

Therefore, companies should look to establish processes to quickly and efficiently identify inventions, and to determine whether to file patent applications or to otherwise publicly disclose those inventions. If the technology is worthy of patent protection, filing a series of low-cost provisional applications during the course of development of the technology can be a cost-effective way to establish a series of early “first-to-file” filing dates for the technology.

On the other hand, if it is decided that an invention is not worth immediately filing a patent application for, publicly disclosing the invention should prevent others from receiving patents on the same technology. But the decision to publicly disclose an invention before filing a patent application should not be taken lightly. Public disclosure prior to filing a patent application will likely cause foreign patent rights to be forfeited. In the case of software, which is not patentable in most foreign patent systems, this is not a problem. Therefore, disclosures for software-based inventions can be an ideal way to create prior art for others without the trade-off of forfeiting any patent rights that a company would otherwise be entitled to.