There is nothing more fundamentally important to patent law and patent practice than the definition of what constitutes “prior art.” There is no generally acceptable, easy to understand definition of what is or is not prior art. 35 U.S.C. 102 defines what prior art is, and by exclusion defines what it is not. Prior art is any reference, patent, publication, knowledge or behavior that is captured by one of the subsections of § 102. If no subsection of § 102 qualify something as prior art, then it is not prior art.
The fundamental, earth-shattering changes to patent law ushered in by the America Invents Act (AIA) do not go in effect until March 16, 2013. At that time, the United States will transition from our historically “first to invent” system into a “first inventor to file” system. You will still need to be an inventor, so taking from another without contributing any conception will still be prohibited, but no longer will it be possible to get a patent if you are the first to invent but second to file a patent application. Only in the most extraordinarily rare situation will the first to invent be able to prevail if they were the second to file. This extraordinarily rare situation will be when the first to file derived the invention from the first inventor, but even then it isn’t that simple or straightforward. Simply stated, the so-called U.S. grace period will be so narrow that it cannot be considered useful. It will be so narrow that it practically won’t exist. So we will have a virtual absolute novelty regime.
All of the above discussion of first to invent versus first to file is brought to you by fundamental changes to § 102. What that means is that the definition of what is prior art will change, and change dramatically. But will this influence the way that prior art is searched?
“No, it won’t change the way we do searches because it is our job to find whatever we can,” says Pat Walsh, co-founder of the patent research company Walsh IP. “Once the U.S. goes to first to file virtually everything we find should be prior art if an application has not been filed. Based on how the USPTO seems to interpret the statutory grace period, it would be an extreme case where what we find wouldn’t be prior art. So our job will remain collecting the best, closest prior art we can find.”
While the mechanisms for searching prior art won’t likely be impacted, the value of the prior art located will be dramatically impacted according to Ken Hattori, partner in the Washington, D.C. firm of Westerman, Hattori, Daniels & Adrian, LLP. “US patents with a foreign priority claim will become tremendously stronger as prior art,” says Hattori. “The subject matter disclosed in the US patent has an effectively filed date as priority date since the Hilmer doctrine is eliminated.” This is significant because “there will be no Section 112 requirement for the description of the subject matter disclosed in the foreign specification. Thus, the subject matter in a prior art US patent or application will go back to the foreign filing date as a reference.”
What does that mean? First, it means that perhaps the most significant change to U.S. patent law relates to the value of foreign prior art. In patent circles, what Hattori is referring to is known as the elimination of the Hilmer doctrine. Under the Hilmer doctrine, you could use your foreign priority date to get behind prior art that surfaced between your foreign date and U.S. filing date. However, your foreign filing date was not considered to be a prior art date that a patent examiner could use against others. Hilmer has been eliminated by the AIA, so prior art will now include all kinds of foreign filing as of their foreign filing date. This means that foreign patent applications and issued foreign patents will be stronger prior art against U.S. patents and pending applications. In other words, it will be much harder for a U.S. applicant to overcome earlier filed foreign patent applications. It also means it will be easier to subsequently challenge issued U.S. patents based on foreign patents and publications.
Why is this significant? Applications filed on and before March 15, 2013, will find it much easier to overcome foreign prior art based rejections. This is because under § 102(e), applications that qualify as “foreign applications” do not receive a 102(e) date, which means that they are not considered prior art as of the time they are filed, but rather considered prior art as of the time they publish or the patent issues. So if you filed a U.S. application after some foreign application was filed, but before it was published or the patent issued, you had no problem because it would be deemed prior art in the U.S. as of the publication or patent date, not its foreign filing date. International applications (i.e., applications filed pursuant to the Patent Cooperation Treaty [PCT]) are treated differently, and go beyond the scope of this article.
With the re-definition of what constitutes prior art, it will be easier for examiners to reject U.S. patent applications based on foreign-filed applications. It will also make it easier to challenge issued patents based on foreign-filed applications. While that may sound reasonable, many (if not most) other countries would not allow a domestic patent to be defeated based on an earlier foreign filing. So the U.S. will make it more difficult to obtain a patent compared with other countries. Whether that is an unintended consequence or being done on purpose, it will result in either fewer U.S. patents or a greater race to the U.S. Patent Office, neither of which would be good.
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