The United States Patent and Trademark Office (USPTO) today published a proposal to amend the rules of practice in patent cases to implement the “first-inventor-to-file” provisions of the Leahy-Smith America Invents Act (AIA). The first-inventor-to-file provision converts the United States patent system from a “first to invent” system to a first-inventor-to-file system. The first-inventor-to-file provision, which takes effect March 16, 2013, also alters the scope of available prior art to apply against a claimed invention in determining the novelty and obviousness of the claimed invention.

In addition to proposed amendments to the rules of patent practice, the USPTO is proposing examination guidelines to inform the public and patent examiners of its interpretation of the first-inventor-to-file provision of the AIA. The guidelines likewise are intended to advise the public and patent examiners how the changes introduced by the first-inventor-to-file provision impact the sections of the Manual of Patent Examining Procedure pertaining to novelty and obviousness.

“The first-inventor-to-file provision of the America Invents Act, one of its hallmarks, brings greater transparency, objectivity, predictability, and simplicity in patentability determinations,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “At the same time, the provision brings the United States closer in harmonizing our patent law with those in other countries around the globe.”

In the proposed examination guidelines, the USPTO explains in detail the extent of the new grace period that will be provided pursuant to the new 102(b), which goes into effect on March 16, 2012.  The interpretation by the USPTO seems consistent with the statute and what it means to change to “first to file.”  The grace period will be personal to the inventor and to avail themselves of the grace period they will have to demonstrate that disclosures being used against them by the examiner are their own or the disclosure of others who have derived the disclosure from the inventor.  There is no mention of the disclosure inoculating an inventor from a subsequent, independent disclosure the way that some have suggested.  See USPTO Publishes Proposed First to File Examination Guidelines.

While the USPTO interpretation is fair and accurate based on the statute and what it means to be “first to file,” it is at odds with the legislative history.  In the Legislative History, Senator Kyl (R-AZ) said: “Under new section 102(b)(1)(B), once the U.S. inventor discloses his invention, no subsequent prior art can defeat the invention. The U.S. inventor does not need to prove that the third party disclosures following his own disclosures are derived from him.”  I have argued that Senator Kyl’s interpretation was not correct within the language of the statute actually passed, and it seems pretty clear that the USPTO agrees. For more see America Invents: Lies, Damn Lies and Legislative History.

In part, the Proposed Examination Guidelines say:

The AIA in 35 U.S.C. 102(b)(1)(B) provides additional exceptions to the prior art provisions of 35 U.S.C. 102(a)(1). These exceptions disqualify a disclosure that occurs after a public disclosure by the inventor, joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor…

There is no support I can find in these documents to support Senator Kyl’s interpretation or the belief that a disclosure effectively gives an inventor an option to file a patent application within 12 months.

Those who wish to submit comments relative to the proposed rule changes and/or the proposed examination guidelines can submit such comments provided they are received on or before October 5, 2012. Comments should be sent by electronic mail message over the Internet addressed to: fitf_rules@uspto.gov. Comments may also be submitted by postal mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, marked to the attention of Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration.

The USPTO also plans to discuss the proposed rules and guidance at a series of “roadshows” scheduled to occur in Alexandria, Va.; Atlanta, Ga.; Denver, Colo.; Detroit, Mich.; Houston, Texas; Los Angeles, Calif.; Minneapolis, Minn.; and New York, N.Y., this September. Further information about the proposed rules and guidelines may be found in the Federal Register Notice: http://www.uspto.gov/aia_implementation/first-inventor-to-file_proposed_rules.pdf. Further information about the “roadshows” may be found on the AIA micro-site available at http://www.uspto.gov/aia_implementation/roadshow.jsp.

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