America Invents Act’s First to File Rule

The Leahy-Smith America Invents Act of 2011 (AIA) extensively reforms U.S. patent law. Perhaps the AIA's most publicized reform is the change of the U.S. first-to-invent system to a first-to-file (i.e., first-inventor-to-file) system. First-to-file becomes effective March 16, 2013, but good reason exists to consider planning for this change now.

According to the AIA, a patent application filed with at least one claim having an effective filing date on or after March 16, 2013, will fall under first-to-file provisions, while applications having an effective filing date (for all claims) prior to March 16, 2013, will fall under the present, first-to-invent provisions. There will exist a lengthy transition period, where either first-to-invent or first-to-file could apply, as continuing applications based on pre-AIA parent applications will continue to be filed.

The AIA does not, however, transform U.S. patent law to a true first-to-file system, in which the first to the patent office prevails in all instances. This is so because legislators of the AIA retained the limited, one-year grace period for application filing after an enabling public disclosure by the inventor or someone who derived the disclosure from the inventor. This was added primarily to accommodate the early publication desires of research universities and independent inventors. Accordingly, applicants must be cautious, as a delay in application filing can result in loss of patent rights, even if the applicant is the first to file.

Consider the following scenario:

• Company A conceives Invention X on January 1, 2013;

• Company B independently conceives Invention X on February 1, 2013;

• Company B publishes a detailed, enabling disclosure of Invention X on March 1, 2013;

• Company A diligently files a patent application for Invention X on April 1, 2013.

As a result of Company B's publication of an enabling disclosure for Invention X before Company A's patent application filing, and since Company A's patent application was filed on or after March 16, 2013, thereby falling under first-to-file provisions, only Company B has potential U.S. patent rights for Invention X, even though Company A was the first-to-file. Company B must, of course, file a patent application within the one year grace period of its own publication should it wish to seek patent protection. (Note that Company A may still be able to continue practicing Invention X due to the prior user defense established under the AIA. Prior user defense will be the subject of a subsequent Blank Rome News Alert.) But now the pitfall—although early publication by Company B preserves its U.S. patent opportunity, its early publication precludes patent protection in true first-to-file jurisdictions.

Now consider the same scenario, except Company A diligently files a patent application for Invention X on March 15, 2013, instead of April 1, 2013. Company A's application falls under the first-to-invent provisions, and Company A could obtain a patent, as Company B's publication occurs less than one year prior to Company A's application filing. Company A could obtain its patent by swearing behind the March 1, 2013 publication date (i.e., establishing that Company A conceived of invention X before March 1, 2013 and diligently reduced it to practice).

In view of the intricacies imposed by the upcoming first-to-file system, patent applicants should consider:

1. Filing patent applications on or before March 15, 2013. Applicants can beneficially use this interim time period (between now and March 15, 2013) to file applications thereby obtaining the benefits of the current first-to-invent system;
2. Publishing invention disclosures on or after March 16, 2013. Applicants can consider early publication of their inventions, even prior to patent application filing, assuming they do not contemplate seeking patent protection outside the U.S., and assuming they intend to file a patent application within one year. The invention publications can render unpatentable later-filed patent applications by others;
3. Preserving both U.S. and international patent rights by filing a patent application before invention disclosure; and
4. Performing an early assessment of inventions, determining whether the inventions are worthy of patent protection internationally, or in the U.S. only, or should be held as a trade secret, and then acting accordingly. If in the U.S. only, consider early publication.

In conclusion, the AIA's first-to-file provision can be costly to procrastinators. Applicants who take their time, and contemplate pursuit of patent protection during invention development, might find themselves precluded from patent protection by competitors who file or disclose early.