First to File Patent Laws effective March 16, 2013
A White Paper by Thomas Kulaga, Patent Attorney
Starting March 16, 2013, the United States moves to a First to File patent system. Many of the laws and rules that have been in place for years under the First to Invent system will be changed.
America Invents Act Overview
On Friday, September 16, 2011, President Obama signed the America Invents Act, also known as the AIA and the Patent Reform Act. Many of the changes to the patent laws are being phased in over 18 months. Some changes, such as the mostly insignificant micro-entity fee changes, will take longer to be implemented.
The first change was an immediate fee increase of approximately 15%. The America Invents Act did not appreciably change fee diversion of Patent and Trademark Office (PTO) fees. Fee diversion occurs when Congress uses a portion of patent fees to fund other, non-patent related, government activities.
In September 2012 the Post-Grant Review provisions of the new laws became effective for business method patents. The Post-Grant Review provisions will be fully effective for all patents with a priority date after March 16, 2013. Post-Grant Review provides for a nine-month period after a patent issues for third parties to challenge a patent. The Post-Grant Review challenge is easier to make than the previous inter partes reexamination. After the nine-month Post-Grant Review period, inter partes review is available, but with fewer grounds available to challenge the patent. The ex parte reexamination of patents remains almost the same after the AID takes effect. (Inter partes review is one in which the third party participates, compared to ex parte reexamination in which the third party can initiate the review without participating in the review.)
On March 16, 2013, the First to File provisions take effect. The change to a First to File system significantly impacts the effect of prior art and takes away the 12 month grace period for public use and offers for sale. Although the 12 month grace period for public disclosures is still mostly available, it is advisable to file a patent application before making any public disclosure.
What to do before March 16, 2013
Patent applications filed before March 16, 2013, will be examined under the First to Invent system. Patents issued from applications filed before March 16, 2013, will be treated under the First to Invent system by the courts.
- For new inventions that are to be patented, file a patent application before March 15, 2013.
- For products embodying an invention that have been offered for sale or have been sold, a patent application must be filed by March 15, 2013, or the invention will be in the public domain.
- For inventions that have been publicly used and are to be patented, file a patent application before March 15, 2013.
- If a public disclosure of an invention has been made, a patent application should be filed by March 15, 2013, to avoid any problems with the new public disclosure law.
What NOT to do after March 16, 2013
Patent applications filed on or after March 16, 2013, will be examined under the First to File system. Patents issuing from applications filed on or after March 16, 2013, will be treated under the new First to File system.
If a patent is desired and a patent application has not yet been filed:
- do not offer for sale or sell any product embodying the invention or any improvement not described in a patent application.
- do not allow any public use of any product embodying the invention or any improvement not described in a patent application.
- avoid any public disclosure of the invention.
Details on the Patent Law Changes
The America Invents Act has 37 sections. Section 3 of the AIA deals with the change to a first inventor to file standard. In order to obtain a patent, the invention must be novel (new) and non-obvious. Currently, inventors have a one year grace period to file a patent application. A patent cannot be obtained if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. 102(b).
The one year grace period allows inventors and small businesses the opportunity to shop the invention around, test market it, begin manufacturing and marketing, or otherwise exploit the invention before deciding if the invention should be patented. It is not unusual for a utility patent to cost $8,000 to $20,000 to obtain. Filing a provisional application can cost $3,000 or more. The one year grace period allowed for the collection of information useful for deciding if an investment in a patent made economic sense.
The Patent Reform Act changes the law with respect to novelty. A patent cannot be obtained if "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." AIA, sec. 3(b)(1) (revising 35 U.S.C. 102(a)(1)). There is a narrow exception to this rule. Disclosures within one year of the filing date made by the inventor are not prior art.
The one year grace period is gone. Independent inventors and small businesses must make the patent decision before they begin publicly using or offering products embodying the invention for sale. Those inventors who like to test market their inventions will be faced with a gamblers choice. The gamble is to invest in a patent application in the belief that the invention will be profitable.
Another section of the law that is gone is the previous requirement that a person cannot obtain a patent if "he did not himself invent the subject matter sought to be patented." AIA, sec. 3(b)(1) (deleting 35 U.S.C. 102(f)). Sure, the person filing the patent application is required to make an oath or declaration that he "believes himself or herself to be the original inventor." But a patent is not invalidated if the identified inventor did not invent the claimed invention.
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Disclaimer: The above information is offered as general information that may or may not be applicable to specific situations. The reader is cautioned to obtain the advice of a patent attorney before acting on the basis of the above information.
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