America Invents Act: First to Invent v. First to File System

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