Get ready for first-inventor-to-file

Last week, the USPTO published a set of proposed rules that will implement the new first-inventor-to-file system, which is one of the most significant changes that the America Invents Act will make to U.S. patent law.  Under the new first-to-file law, which takes effect March 16, 2013, if two inventors independently create the same invention, then (with limited exceptions) inventor who first files his or her patent application will get the patent, regardless of which one actually created it first.

The proposed rules, along with a set of proposed examination guidelines that the USPTO released on the same day, clarify certain exceptions to the first-to-file regime, establish new procedures for patent applicants in certain situations, and shed light on how the USPTO’s examination corps will treat prior art when reviewing patent applications filed on or after March 16, 2013.

Using Prior Publications to Disqualify Later Publications as Prior Art

One exception to the first-to-file law is that if an inventor disclosed the invention  within one year prior to filing his or her patent application, then the inventor’s disclosure can allow the inventor to disqualify later publications by others as prior art.  Because of this, the U.S. “first to file” system may be more appropriately called “first to file or publish.”

The proposal clarifies that if an inventor wants to disqualify a patent application or publication as prior art, then the inventor’s prior disclosure also must qualify as “prior art” — in other words, it must be a printed publication, public use, or other public disclosure.

Under the proposed rules, the inventor will be required to submit an affidavit describing his or her prior public disclosure, with supporting evidence (such as a copy of the publication).  If the prior disclosure was not by the inventor, then the affidavit must explain how the discloser obtained the information from the inventor.

The proposed rules also recommend (but will not require) that applicants include a statement of prior publication in body of the patent application.

Beginning March 16, 2013, Patent Applicants Must Identify New Matter 

When filing a patent application that claims priority to a provisional application, patent applicants commonly supplement the application with additional material  that was not included in the provisional.  The new material is not entitled to the provisional application’s priority date.

Until now, applicants were not required to identify whether or not the formal application included new matter.  Under the new rule, if a patent application filed on or after March 16, 2013 claims priority to a provisional (or other) application filed before that date but also seeks to claim new matter not disclosed in the priority application, then the applicant must file a statement to that effect.  The statement of new matter must be filed within 4 months of the formal application’s filing date or entry into national stage, or 16 months of any foreign priority application, whichever is later.  The statement will not need to identify the new matter or the specific claims that do not get the benefit of the priority date.

Prior Art Knows No Geographic Boundaries

The proposed USPTO examination guidelines for implementing the first-inventor-to-file system note that the AIA expands the scope of prior art to any publication anywhere in the world

The USPTO will accept comments on the proposed rule through October 5, 2012.

Update:  The USPTO published its final first-inventor to file rule on February 14, 2013.  Details are available via this link.


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