On March 30, 2011, the House is scheduled to debate The America Invents Act, the patent reform bill passed by the Senate 99 to 5 on March 8, 2011. There are some differences in the House patent reform bill from Senate bill S.23, but the provision that has undoubtedly generated the most debate, that is the switch from a first-to-invent to a first-to-file system, remains in the House’s proposed legislation. I recently listened to a One-Hour Briefing in which Allan A. Fanucci, Partner at Winston & Strawn, discussed the implementation of US Patent Laws under the current 35 U.S.C. s 102(a) as compared to what the statutory bars will be under the first to file system. Here are some highlights from the briefing…
First to File (proposed for US)
- The first party to file has the opportunity to obtain the patent
- The earlier party’s application becomes prior art to all later applicants both for novelty and obviousness (or lack of an inventive step)
- Exception: prior application was derived from the later filer
- While Interferences are being discontinued except for derivation, documenting prior inventions should be important in showing that invention was not derived from others
New Statutory Bars under Proposed Legislation
*102(a) A person shall be entitled to a patent unless the invention is:
- known by other anywhere before effective filing date
- used by others anywhere before effective filing date
- patented by others anywhere before effective filing date
- published by others anywhere before effective filing date
*The “effective filing date” of a US application is the actual filing date of the application or the filing date of the earliest US or foreign application for which the patent or application is entitled.
*These changes will become effective one year after the date of the enactment of the new law.
*102(b) Exception to 102(a):
(1) Any disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if:
- (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
- (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) Any disclosure in a patent or patent application shall not be prior art to a claimed invention under subsection (a)(2) if:
- (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a join inventor;
- (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
- (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
Examples of Proposed New Law
Example 1
– Party A creates an invention and reduces it to practice
– Party B later does the same
– Party B, without any knowledge of Party A’s invention, files a US patent application before Party A
– Party B would be entitled to obtain a patent compared to Party A and Party B’s patent or published application would be prior art for both novelty and obviousness to Party A’s application
– The date that the invention is made no longer applies!
Example 2
– Party A creates an invention and reduces it to practice
– Party B is developing a similar invention, but gains knowledge of Party A’s invention so that Party B rushes to file a US patent application
– Party A, without any knowledge of Party B’s invention, later files a US patent application
– Party A would be entitled to obtain a patent compared to Party B to the extent that Party A can show that Party B had knowledge of Party A’s invention prior to the filing of Party B’s application.
– Derivation proceedings would replace interference proceedings if Party A wishes to establish that Party B derived the invention from Party A.
The full One-Hour Briefing will be available soon at PLI’s on demand learning center.
Tags: "first-to-invent" system, America Invents Act, derivation proceedings, First-to-File System, joint inventor, Senate bill S.23
In the example above, it says correctly:
“- Party A would be entitled to obtain a patent compared to Party B to the extent that Party A can show that Party B had knowledge of Party A’s invention prior to the filing of Party B’s application.
– Derivation proceedings would replace interference proceedings if Party A wishes to establish that Party B derived the invention from Party A.”
It should be noted that there is no right to discovery, so in practice it would be very hard to prove derivation. This will have the effect of rewarding dishonesty & espionage. Even if a copier does not apply for for a patent, such a party can preclude the inventor from receiving a patent by writing about it w/o giving credit.
The changes to the grace period in Section 102 cited above will lead to:
1) inventors accidentally losing their patent rights due to public use or offering for sale, and:
2) inventors who understand the new restrictions will be much less open with potential investors, potential customers and potential employees. This will have a chilling effect on our innovation ecosystem and disproportionately harm smaller entities who do not have the internal resources that the above do.
See: http://bit.ly/Grace-Period-USA
I wrote about the above and other aspects of this unfortunate bill at:
http://www.huffingtonpost.com/gary-lauder/patently-absurd-or-how-to_b_832703.html