Highlights of the USPTO first-inventor-to-file rule

The USPTO has published its long-awaited first-to-file rules and examination guidelines, which will take effect March 16, 2013.   The new rules will convert U.S. patent law from a “first-to-invent” system to a “first-to-file” system.  In its simplest form, this means that if two people  separately invent the same invention, and if both file patent applications for the invention, the first person who filed his or her application will receive the patent.

However, as one might expect when the final rule requires 35 pages in the Federal Register and the examination guidelines require another 29 pages, the rule has more than a few caveats and nuances.  Highlights of the new rule include:

The first-inventor-to-file rule only applies to applications filed on or after March 16, 2013.

And even this general rule comes with some exceptions.  For example, if a “transition”  application (1) is filed on or after March 16, 2013 and claims priority to an earlier-filed application, and (2) does not claim any new subject matter, then the transition application will still be governed by the first-to-invent rule.

If any new matter is added to the claims, the applicant must say so.

When filing a patent application that claims priority to a provisional application, patent applicants commonly add material that was not included in the provisional.  The new matter 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 (1) a patent application filed on or after March 16, 2013 claims priority to a provisional (or other) application filed before March 16, 2013; and (2) any claims in the new application contains subject matter that was not disclosed in the  priority application, then the applicant must file a statement to that effect.

The applicant must file the statement of new matter 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 does not need to identify the specific claims or the specific new matter.  Instead, it merely needs to state that new matter exists in the claims.

The practical effect of this rule is that if an applicant wants a transition application to be governed by the old first-to-invent rule, the transition application must not claim any new matter.

Any publication or disclosure made by others before the filing date is now prior art. . . 

The America Invents Act (AIA) expands the scope of prior art to include any disclosure anywhere in the world.  This may include publications, prior sales, public uses and oral disclosures.  In addition, a publication that does not have a publication date that is sufficiently early to qualify as prior art may nonetheless be used against a patent application if the publication provides evidence of an earlier disclosure, such as evidence of a prior sale.

. . . . unless the inventor him/herself published the information first.

One exception to the expanded scope of prior art is that if the inventor disclosed the invention within one year prior to filing the patent application, then the inventor’s prior disclosure may 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.”  Of course, publication prior to filing will preclude patentability in most other countries.  So, inventors who publish early should be aware that the publication could impair a global patent filing strategy.

Also, if the inventor can show that the third-party disclosure was derived from the inventor, then the inventor may disqualify the third-party disclosure as prior art.  

Under the rule, the inventor will be required to submit an affidavit that identifies the subject matter that he or she previously disclosed, along with the date of the prior disclosure.  If the inventor’s prior disclosure was a publication, then the inventor must provide a copy of the publication.  

If the inventor asserts that the prior art was derived from the inventor, then the affidavit must explain how the third-party obtained the information from the inventor.

Practical effect:  File early, consider multiple provisional applications

A practical effect of the first-inventor-to-file system is that inventors who are considering a patent should not delay filing.  In addition, inventors who have partially developed an invention should consider filing a provisional patent application early in the development process.  Then, as development occurs over the next 12 months, consider filing additional provisionals to fix filing dates for new subject matter as it is invented.

USPTO plans training session via March 8, 2013 webcast

According to a USPTO press release:

The USPTO will provide more information on the first-inventor-to-file final rules and examination guidelines at a public training session to be held on Friday March 8, 2013 at the USPTO’s headquarters in Alexandria, Virginia.  The training session will be webcast.  Details on webcast access will be available on the AIA micro-site at www.uspto.gov/AmericaInventsAct.