Friday, March 15, 2013

First to file effective date -Start your Engines!

The first-to-file provisions of the American Invents Act (AIA) take effect on March 16, 2013. Paul S. Tully, Ph.D., Partner, and Jeremy E. Noe, Partner, McDonnell Boehnen Hulbert & Berghoff LLP, kindly provided this guest post regarding the America Invents Act.

Patent application filings have spiked sharply in recent weeks as inventors race to the patent office ahead of the March 16, 2013 date that marks implementation of a key, sweeping aspect of the 2011 America Invents Act (“AIA”).  For many years, the U.S. Patent Office (“PTO”) evaluated and awarded patents based on a “first to invent” system, where a patent issued to the first person to conceive of the invention, with reduction to practice, even if that person was not the first to apply for the patent on the invention.

This Saturday marks the fundamental shift in U.S. patent law to a “first to file” system, where the PTO will award priority of invention to the first person to file an application, regardless of whether another applicant could prove he was the first to actually conceive of the invention.  This change ushered in by the AIA is intended to harmonize U.S. patent practice with the rest of the world’s patent rules, which have overwhelmingly adopted the “first to file” system.  However, the change may disfavor independent inventors and smaller companies, who will no longer have the luxury of time to evaluate commercial interest, yet do not have the resources to rapidly prepare and file patent application.  Such inventors and companies may feel as if they are racing uphill against larger and better-funded companies, who are well able to file numerous and perhaps initially more speculative patent applications in order to secure priority of invention on at least some aspects of an invention.

Interestingly, there is an important exception to the new first to file rules as they relate to inventors:  there is a limited one year grace period for publications by inventors.  Simply put, an inventor can general publish an invention, and still file a patent without his or her publication being used against them as prior art,, as long as a patent is filed within one year, and filing encompasses the disclosure.   This exception is limited to prior published “disclosures,” but does not encompass an on sale exception.  Moreover, the exception is personal to the inventor(s).  It appears, that after March 16th, this wrinkle in the rules may become a powerful sword and shield for inventors.

This Saturday also marks implementation of another change to U.S. patent practice, under which the universe of prior art the PTO can properly consider in evaluating patentability of an application will expand greatly.  Formerly, foreign patent applications were considered prior art only if they were published in English.  Under the AIA, foreign patent applications are considered prior art regardless of the language they are published in.  This change again may disfavor independent inventors and smaller companies, who may not have the resources to obtain and consider a prior patent application published, say, in Swahili.

Additionally, it is important to keep in mind that under the previous rules, novelty prior art was generally limited to public uses, sales that could be shown in the U.S. before priority date.  Under the new AIA rules, prior art now include public uses or sales outside of the U.S.:  U.S. patents, published U.S. patent applications, and published international applications are available as prior art as of their earliest filing date.  This includes the foreign filing date, which is a major change from pre-AIA procedures, wherein foreign filing dates could not be relied on as the “102(e) date” of a patent or published application.

Though many hail the changes wrought by the AIA, it remains to be seen whether it will accelerate or instead put the brakes on further innovation.

Paul Tully, PhD
Jeremy Noe

(Dr. Tully and Mr. Noe are patent attorneys/partners at MBHB in Chicago, and can be reached at or

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