Patent Law Practice Center

First to File and the Patent Act of 1790

The United States Constitution is a relatively short document, but one that has provided guiding principles for over 220 years.  Article I, Section 8 of the U.S. Constitution granted Congress the power to grant patents and copyrights for limited times in order to promote the progress of science and the useful arts.  Clearly demonstrating just how important the Founding Fathers perceived a patent system to be, at the prompting of George Washington in his first State of the Union Address, the young Congress passed the the Patent Act of 1790 as the third Act of Congress.

Section 1 of the Patent Act of 1790 explained that a party would be awarded a patent in the event that it was deemed a sufficiently important discovery or invention:

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That upon the petition of any person or persons to the Secretary of State, the Secretary for the department of war, and the Attorney General of the United States, setting forth, that he, she, or they, hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used, and praying that a patent may be granted therefor, it shall and may be lawful to and for the Secretary of State, the Secretary for the department of war, and the Attorney General, or any two of them, if they shall deem the invention or discovery sufficiently useful and important…

Patent Act of 1790, Ch. 7, 1 Stat. 109-112 (April 10, 1790).

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Courtenay Brinckerhoff: What Happens When Interfering Applications Straddle The First-To-File Effective Date?

The following article comes from Courtenay C. Brinckerhoff, Partner at Foley & Lardner and writer of PharmaPatents Blog. 

It has been a while since I’ve taken an in-depth look at the first-to-file provisions of the America Invents Act. This interesting fact pattern comes from Andrea Levesque, IP Counsel at ARC Energy, and relates to the interference provisions that survive the general March 16, 2013 effective date of the first-to-file provisions.

The March 16, 2013 Effective Date

As I wrote previously, one of the more complex aspects of the America Invents Act relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102. As a general rule, applications with any claim that has an effective filing date on or after March 16, 2013 will be subject to the new version of § 102. On the other hand, applications with any claim that has an earlier effective filing date still will be subject to the current versions of 35 USC §§ 102(g), 135 and 291: (more…)

Maintaining Rights to an Application under the First to Invent Laws – a.k.a. Avoiding the AIA § 3(n)(1) Trap

Written by Leonard R. Svensson, Partner at Birch, Stewart, Kolasch & Birch, LLP.

Patent practitioners know by now that applications filed before March 16, 2013 will be evaluated under the current “first to invent” laws. Commentators are debating whether this may result in a “bump” of applications filed just before the deadline. But if you rush to file by the deadline, care must still be taken to ensure that the resulting application(s) maintain the right to be evaluated under the current “first to invent” regime.

Suppose one files a provisional application on March 15, 2013 and then one year later converts that case to a regular utility application. If that application is directed to an invention in the life science field, experience suggests that there is a very high chance that at least the broadest claim will be rejected for lack of written description or enablement under 35 USC § 112. If the applicant thereafter amends and narrows such a rejected claim to overcome those rejections, what is the consequence? The unfortunate consequence is that the applicant just lost, forever, the right to have any claims in that application or any divisionals/continuations evaluated under the current “first to invent” regime. This is the consequence of the § 3(n)(1) trap, due to the language in the statute that defines the effective date of an application with the language “shall apply to any application for patent that contains or contained at any time such a claim” having an effective date after the effective date of the “first to file” provisions. Having fallen into the trap, the applicant will have wasted all the work expended to file a provisional application before the March 16, 2011 deadline. (more…)

America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice, Part 2

On September   26, 2011, I attended PLI’s program on the America Invents Act via webcast.  For those of you who were lucky enough to attend it, I’m sure you would agree  that the panel of experts delivered an extremely informative and concise program.  As I listened to each speaker deliver his/her presentation, it confirmed that the AIA is a major overhaul of the U.S. patent law.  It’s going to take quite some time for the patent community to really get a handle on all the nuances of the legislation.  With that being said, the program’s esteemed panel did an excellent job breaking down the various provisions in AIA and helping to make sense of  how it pertains to your patent practice.  According to Gene Quinn, of IPWatchdog and Patent Center Contributor, PLI is considering reprising the presentation for an audience at PLI’s New York City location. Keep you posted.

In a previous post, I highlighted the key points from Robert A. Armitage’s, of Eli Lilly and Company, presentation entitled ”A New 102: Reform, Not Recodification”.  Here are highlights from Janet Gongola’s, Patent Reform Coordinator at the USPTO, presentation entitled “USPTO Implementation of the America Invents Act”.

Challenges of Implementation:

1. Numerous provisions to implement simultaneously – need to ensure that regulations and/or guidance is complementary and not at odds
2. Short time periods – date of enactment, 12 months, 18 months
3. Cooridantion required among various USPTO business units as well as other governmental entities: Patents, Board of Patent Appeals and Interferences, Finance
4. Operational matters, for example, IT Updates, training, hiring personnel

Group 1 Rulemakings and Other Actions (60-Day and Under Effective Dates) (more…)

America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice

On Monday, I attended PLI’s  program on the America Invents Act via webcast.  For those of you who were lucky enough to attend it, I’m sure you would agree  that the panel of experts delivered an extremely informative and concise program.  As I listened to each speaker deliver his/her presentation, it confirmed that the AIA is a major overhaul of the U.S. patent law.  It’s going to take quite some time for the patent community to really get a handle on all the nuances of the legislation.  With that being said, Monday’s esteemed panel did an excellent job breaking down the various provisions in AIA and helping to make sense of  how it pertains to your patent practice.  According to Gene Quinn, of IPWatchdog and Patent Center Contributor, PLI is considering reprising the presentation for an audience at PLI’s New York City location. Keep you posted.  

In the meantime, here are some highlights from Robert A. Armitage’s, of Eli Lilly and Company, presentation entitled “A New 102: Reform, Not Recodification”….

-AIA leaves only a 4-prong set of requirements for patentability-

1. Sufficient differentiation from prior public disclosures and earlier patent filings of others.
2. Sufficient disclosure to identify the claimed embodiments and to enable them to be put to a specific, practical, and substantial use.
3. Sufficient definiteness to differentiate subject matter claimed from subject matter that is not.
4. Sufficient concreteness to avoid excessively conceptual or otherwise abstract subject matter. (more…)