What Is The “First to File” Provision In The America Invents Act?

The America Invents Act, became law in 2011. This new Federal legislation fundamentally changes the law regarding who gets a patent if two patent applications are pending in the US Patent Office at the same time, claiming essentially the same invention. Why should you care?

Under the current/old law, if two patent applications claim the same invention, the Patent Office declares a special procedure, called an Interference, which is designed to determine who invented first, and to then award the patent to that party who invented first. The party who invented second gets nothing unless there are differences in the applications. The second to invent can potentially get patent coverage on his differences, but nothing on the subject matter is claimed in both applications.

The Interference procedure is tedious, and requires difficult proofs. But in the end, its purpose is to award patent rights to the party who invented the overlapping subject matter first, if he/she can prove that he/she was first to invent.

Thus, while there is now, under current law, pressure on the scientist to complete his work as quickly as possible, namely to invent first, his/her attorney can take a reasonable amount of time to do a quality job of preparing the patent application, without substantial risk that his/her inventor/client will lose rights as a result.

As of March 16, 2013, that changes. The pressure, to complete the task quickly, adds the patent attorney to the mix. As of that time, not only will the scientist be under pressure to work fast, but so will his patent attorney be under the same pressure.

Will that affect the quality of the workmanship being received by the US Patent Office? Let’s explore that for a moment. Historically, and I would argue that that history continues to the present time, highly qualified, highly experienced, patent attorneys who care mightily about their clients are always straining to complete all the tasks their clients need them to do. We work nights. We work weekends. We get up in the middle of the night as our minds conjure up possible solutions to our clients’ matters, that we have been struggling mightily to solve to the best of our abilities. Put simply, we are working at max output.

Then along comes March 16, 2013, and we need to add even more urgency to the need to file patent applications quickly. Hmmm…. Wonder where we will get that time? Wonder how alert we will be as we work the eighth day of the week. Yes, we can hire new associates. But then we need to train them – for a period of several years, while we continue to do the “productive/paying” work that we are already doing. Somehow that doesn’t sound like a “solution” to me. Perhaps I’m complaining. I prefer to just call it looking at the scenery and describing what I see.

So how will we cope? I, for one, don’t think I can take on more hours, more work, without sacrificing quality of workmanship; and that’s a sacrifice I’m not willing to make. Rather, I expect that I will become more selective in accepting new clients. Perhaps I won’t be able to accept any new clients for a while. Even if I can, I’ll be looking at a prospective new client more closely in terms of personality match, financial stability that assures me that I’ll get paid, how much unpaid research I might have to do in order to meet the needs of the client, and such things as that.

For certain, the added demands on the attorney will add stress to the relationship between the attorney and his/her client. Is that good? I think not. So is this new provision of the law a good thing? Each person will have to decide for himself/herself, probably based on how the change affects him/her, personally, as it plays out.

So what will be the practical effect of this change? Put simply, we go from the current situation where the person who invents first gets the patent, and the person who invents later does not get a patent – to a situation where the person who files his/her patent application first gets the patent, and the person who filed later, even a day later, gets no patent on that subject matter. Thus, we go from a race to invent first to a race to be the first to file a patent application.

Some folks seem to think that they need not concern themselves with the “first inventor to file” changes. Their attorney will make the adjustment, and the changes they see will be negligible, if any. I believe the transition will be more difficult than that, both for the patent applicant and for the attorney.

This portion of the America Invents Act becomes effective March 16, 2013. When a patent application is received at the US Patent Office, it is identified with a particular date, known as the “filing date”. If the application contains a reference to an earlier-filed application, some or all of the subject matter in the application may be identified with an earlier date, known as a “priority date”. The earlier of the “filing date” or the “priority date” is known as the “effective date” of the patent application, or of certain subject matter in the patent application.

The provision of the America Invents Act which pertains to the “effective filing” date reads as follows:

1. IN GENERAL- Except as otherwise provided in this section, the amendments made by this section…shall apply to any application for patent, and to any patent issuing therefrom, that contains or contained at any time –
A. a claim to a claimed invention that has an effective filing date…that is on or after the effective date described in this paragraph or
B. a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

So what’s the big deal here?

In a simple case, other than the time pressure, this change won’t matter much. For example, Inventor 1 files a new patent application on March 16, 2013. Inventor 1 has not filed any earlier patent applications for this invention, and so the application does not claim priority to any earlier-filed application. Given the March 16, 2013 filing date, given that no earlier application is referenced or claimed as a priority application, the effective filing date is March 16, 2013 and we have no complications. Assuming Inventor 1 is the first inventor to file a patent application for that invention, Inventor 1 is entitled to be first in line to get this patent. The application will, of course, have to meet the other standards for patentability such as absolute novelty and unobviousness. It must also successfully meet any challenges under the new post-grant review provisions, and the new third party intervention provisions, of the new law, as well as other possible reasons under which grant of the patent may be denied.

Under the 1952 Patent Law, as subsequently amended, through March 15, 2013, a patent applicant could claim priority to an earlier-filed patent application, as long as at least one inventor of the new patent application was the same as in the earlier patent application and the new patent application claimed priority to the earlier-filed application. If both the effective filing date and the priority date of the new application were prior to March 16, 2013, the “first to invent” system that we have now applies. However, under the new law, if any one claim which ever exists in the new application is not entitled to a filing date before March 16, 2013, all claims in that application will be treated as though they were filed on or after March 16, 2013, meaning that they are subject to the new “first inventor to file” provisions.

What’s the problem with that? Let’s say that next month, on August 15, 2012, our Inventor 1 files his first patent application “I”. Application “I” contains a claim reciting three elements, (a), (b), (c). Elements (a) and (b) are sufficiently described in the application, but the description of element (c) is rather skimpy, not meeting the requirements for an enabling disclosure or a written description because our Inventor 1 has not completed all the research he needs to do. But for his own reasons, he realizes that he needs to get the application filed promptly, so he does. Our Inventor 1, knowing his research is not really complete, plans to do some more experimentation on element (c). The US Patent Office grants an effective filing date of August 15, 2012 to application “I”. inventor 1 completes his research, and on March 21, 2013, he files a second patent application “II” containing exactly the same claim with exactly the same elements (a), (b), (c). The new patent application “II” contains a suitable reference under 35 U.S.C. 120 to previously-filed application, “I”.

If our Inventor 1 had filed application “II” on March 15, 2013, the US Patent Office ultimately would not have given an effective filing date for the respective claim of application “II” of August 1, 2012, because element (c) was not adequately described in the first patent application. But that might not have mattered. If, for example, Inventor 2 files a patent application “III” before Inventor 1’s filing date of March 21, 2013, and the other application “III” did not disclose the critical inventive subject matter, our Inventor 1 could “swear behind” the other application “III” by showing that he, Inventor 1, had invented the invention before the filing date of the other application “III”. Thus, Inventor 1 could have taken advantage of the “first to invent” provisions of the current law.

However, when Inventor 1 files his application “II” on March 21, 2013, he has become a victim of the new law. Elements (a) and (b) of his claim receive the priority date, namely an effective filing date, of August 1, 2012. But element (c) receives an effective filing date of March 21, 2013 because it was not adequately described in his earlier application. This puts all of the claims in Application “II” under the new “first to file” law. Under the new law, Inventor 1 can’t “swear behind” application “III because “first to file” provision controls the entirety of second application “II”. Under the new law, Inventor 1 now gets a patent on application “II” only if Inventor 1 can show, under the new “derivation proceedings”, that Inventor 2 derived the invention from Inventor 1, or unless Inventor 1 and Inventor 2 were both obligated to assign their patent applications to the same person or company. While this may be true in some cases, in many cases, it will not be true and the first to invent gets nothing.

Inventor 1 cannot cure this situation by deleting element (c) from his claims because the new patent law applies to any patent application that contains, at any time, a claim having an effective filing date on or after March 16, 2013. OUCH! Inventor 1 could have avoided this problem entirely by filing his second application “II” by March 15, 2013 and thus have the provisions of the first to invent system now in effect. But what‘s the rush? He had no way to know that Inventor 2 was going to file a competing application. And that’s the rub, the risk. In most cases, we don’t know who will file an application, or when. But there is always the risk that someone will do that, will get to the Patent Office before you do. In the past, we could handle that situation with an Interference. That opportunity is fading fast. And we need to adapt accordingly.

Inventors who file patent applications in the United States need to be aware of this new potential problem. The inventor needs to either do enough research to support all elements they need to claim in the patent application before it is filed, or they need to file that subsequent application before March 16, 2013.

So my conclusion:
We need, now, even though the first to file provisions are not yet in effect, even though first to invent is still the law, we need to strive, now, to file our patent applications as soon as possible.

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