Patents AIA Move to First-to-File

Transcription

1 Patents AIA Move to First-to-File Passed on Sept. 16, 2011 First to File goes into effect for new applications filed on or after March 16, 2013

2 Patents NEW 102(a) Novelty (a) Novelty; Prior Art. A person shall be entitled to a patent unless (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or What s Old What s New

3 Patents NEW 102(a) Novelty (a) Novelty; Prior Art. A person shall be entitled to a patent unless (2) the claimed invention was described in a patent issued [to another]... or in [another s] application for patent published... [that] was effectively filed before the effective filing date of the claimed invention. Someone else filed first this is First-to-File

4 Patents AIA How is it different? A invents an invention on Day 1. B invents the same on Day 2 and files for a patent that same day. A, never telling anyone about the invention, files for a patent on Day 10. What result? Old law? A get s patent (generally), because ok under 102(a) (not before invention) and 102(b) (not more than one year prior) New Law? B get s patent, because effectively filed before the filing date of A 102(a)(2).

5 Patents AIA How is it different? G publicly uses an embodiment of an invention in Hungary. It is never seen or learned about by anyone in the United States. G never files a patent application anywhere. H, who had conceived the invention earlier than G did, files a U.S. application two months after the Hungarian disclosure. What result? Old law? Ok under 102(a) (not before invention; not in US) Ok under 102(b) (not more than one year prior; not in US)

6 Patents AIA How is it different? G publicly uses an embodiment of an invention in Hungary. It is never seen or learned about by anyone in the United States. G never files a patent application anywhere. H, who had conceived the invention earlier than G did, files a U.S. application two months after the Hungarian disclosure. What result? New law? 102(a)(1) problem no longer geographic restriction keyed from filing date, not date of invention

7 Patents NEW 102(a) Novelty before... filing date Invention Date Filing Date

8 Patents NEW 102(b) Exceptions (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art... under... (a)(1) if (A) the disclosure was made by the inventor... ; or (B) the subject matter disclosed had, before such disclosure,... been publicly disclosed by the inventor (1)(A) is a 1 year grace for inventor s own disclosures (kinda like to old 102(b)) (1)(B) rewards the earlier disclosure

9 Patents NEW 102(b) Exceptions (2) A disclosure shall not be prior art to a claimed invention under... (a)(2) if (A) the subject matter disclosed was obtained directly or indirectly from the inventor... ; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor... or (C).... Again, (2)(B) protects first to disclose

10 Patents NEW 102(b) Novelty 1 year or less Invalidating publication from inventor OK publication from inventor Filing Date

11 Patents NEW 102(a), (b) Prior art in 102(a) Excep&ons in 102(b) (limited to 1 year only!) 102 (a) (1) Printed publica5ons, public uses, etc. before filing date 102 (b) (1) (A) Any disclosure coming from the applicant (B) Disclosures by others made aeer a public disclosure by the applicant. 102 (a) (2) 1 st filed U.S. patent applica5on by another 102 (b) (2) (A) 1 st filer derived inven5on from 2 nd filer. (B) 1 st filer filed aeer public disclosure by applicant/2 nd filer.

12 Patents AIA Public Disclosure A invents an invention on Day 1. B invents the same on Day 2, never discloses. A publicly discloses invention on Day 3. B files a patent on Day 4 and A files a patent on Day 5. Who prevails? Under 102(a)(2) B has earlier effective filing date BUT 102(b)(2)(B) A publically disclosed before B filed Under 102(a)(1) Disclosed before A filed BUT 102(b)(1)(A) disclosure by A (inventor) And made less than 1 year before filing

13 Patents AIA Public Disclosure A invents an invention on Day 1. A then publically discloses on Day 2. B invents and publically discloses on Day 3. A files a patent on Day 4. Who prevails? Under 102(a)(1) Disclosed before A filed BUT 102(b)(1)(A) disclosure by A (inventor) And made less than 1 year before filing What if A s disclosure secret? No patent under 102(a)(1) What if A waited to file 366 days after B s disclosure? Beyond 1 year grace period (b)(1)(B)

14 Patents AIA (A) Grace Periods A files an application on June 1 of Year 1. In May of Year 1, A had published her own article disclosing the invention removed from prior art under (b)(1)(a). In April of Year 1, D stole A s notes and placed the invention on sale removed from prior art under (b)(1)(a). Also in April of Year 1, D had filed a U.S. patent application using A s notes removed from prior art under (b)(2)(a). In each case, the art gets removed by subparagraph (A) in either (b)(1) or (2) because the disclosure came from / was derived from A s own work.

15 Patents AIA (B) Grace Periods B publicly discloses his invention in an article on January 1 of Year 1 and eventually files an application on December 31 of that year. On February 1 of Year 1, I publishes her own article based on her own research on the same subject removed from prior art under (b)(1)(b). On March 1 of Year 1 I files a patent application based on her own research application is removed from the prior art under (b)(2)(b). Note: First filer (I) loses patent to second filer (B). In both cases, I s independent work gets excluded from the prior art because B made an earlier public disclosure.

16 Patents AIA Final Thoughts Scope of possible prior art broader (no geographic limitation) Filing early (or at least disclosing and then filing early) is encouraged Case law on what is a public use or printed publication likely still applicable But what about experimental use?