• Two Months and Counting: Patent Applications Filed Before March 16, 2013 Avoid Certain Provisions of the America Invents Act (AIA) and Reap Benefits of the Current Patent Law
  • January 28, 2013 | Author: Mary K. Murray
  • Law Firm: Hamilton, Brook, Smith & Reynolds, P.C. - Concord Office
  • On March 16, 2013, most of the remaining significant changes to U.S. patent law under the AIA will become effective.  Well in advance of March 16, 2013, applicants should consider filing new or continuation-in-part applications to avoid significant changes under the AIA, key features of which are summarized below:

    • The first-to-invent standard will no longer be available and may leave an original inventor without patent rights
    • An inventor's disclosure in the absence of a pending patent application may open the door for a third party to file a patent application and potentially limit or destroy the original inventor's patent rights 
    • The effective date as prior art for a U.S. patent or application, including a Patent Cooperation Treaty (PCT) application, that claims priority to a foreign application, will be the filing date in the foreign country, increasing the pool of prior art for novelty and obviousness rejections and challenges
    • If a continuation-in-part application filed on or after March 16, 2013 has even a single claim that relies on the new matter, the AIA standards for patentability will apply to all claims of the application
    • Post-grant review is only available for applications filed on or after March 16, 2013

    First-to-Invent Versus First-Inventor-to-File

    Under current law, if at least two inventors file separate patent applications claiming substantially the same invention, the first person to invent would be entitled to a patent.  However, under the AIA, for patent applications filed on or after March 16, 2013, the first-inventor-to-file the patent application of an independently conceived invention would be entitled to a patent.  Filing before March 16, 2013 maintains the ability of an original inventor to antedate a third party's patent or application with documentation of prior invention and, thus, obtain a patent.

    Inventor's Disclosures and Subsequent Third Party Disclosures and Patent Applications

    Similar to the current law, written public disclosures under the AIA do not per se preclude an inventor from filing a patent application so long as the application is filed within one year of the disclosure.  However, on or after March 16, 2013, oral public disclosures, even in the absence of accompanying written materials, are considered to start the one year grace period for filing, in contrast to the current law.  Although the disclosing inventor is entitled to file a patent application within one year, a third party disclosure or patent application before the inventor's application may limit the inventor's ability to obtain a patent unless the inventor can sufficiently document that his or her disclosure took place prior to the third party's disclosure or patent application.  Further, under the AIA, it is currently unclear whether an inventor's disclosure will permit the inventor to later claim subject matter that is broader or narrower than his or her own disclosure or the disclosure of a third party.  Evidence of a disclosure, in particular, oral disclosure, will necessitate careful record keeping in order to eliminate a third party disclosure as prior art.  The AIA does not lighten the burden of record keeping and, arguably, increases the burden.  Applicants would be wise to file a patent application before any disclosure, even a confidential disclosure.
    Inventor's Disclosures and Derivation Proceedings

    If an original inventor disclosed an invention, for example, orally in a meeting, in a slide presentation at a meeting or in a publication, and another party filed a patent application derived from the inventor's disclosure prior to the inventor filing an application, the inventor may have the opportunity to file a request for a Derivation Proceeding at the United States Patent and Trademark Office (USPTO) under the AIA.  If the request is granted, the original inventor must prove that the other party derived the invention from the original inventor to have inventorship corrected or claims canceled.  Derivation Proceedings are not automatically granted, have strict time limitations for filing, and require proof of disclosure and communication to the third party.  Evidence of an original inventor's disclosure requires attentive record keeping in order to prevail in a derivation proceeding.

    Expansion of Prior Art Based on Foreign Patent Applications

    For patent applications filed on or after March 16, 2013, U.S. patents and patent applications that make a foreign priority claim (including PCT applications) will be "prior art" as of the foreign filing date of the application.  This change expands the available "prior art" for use in novelty and obviousness rejections at the USPTO and challenges to patents in civil actions.

    Continuation and Divisional Applications

    The current law, not the AIA, will apply to any continuation or divisional application filed on or after March 16, 2013, as long as all of the claims are supported by the application as it was filed before March 16, 2013.  Thus, there is no benefit to filing such continuation or divisional applications based on a pre-AIA application prior to March 16, 2013 to circumvent provisions of the AIA.
    Continuation-In-Part Applications

    Continuation-in-part (CIP) applications, by definition, include additional material that was not in the original application.  Under the current law and the AIA, any claim that relies on the new material will be accorded, as a priority date, the date of filing of the CIP, and all other claims will be entitled to the filing date of the original application.  If, on or after March 16, 2013, a CIP application is filed that is based on a pre-AIA application, and includes even a single claim that relies on new material, all the claims will be subject to all the provisions of the new law under the AIA.  This includes the first-inventor-to-file, derivation, foreign priority dates for prior art and post-grant review.  Generally, filing of CIP applications should be avoided on or after March 16, 2013, particularly if any claim relies on new material.  
    Post-Grant Review

    Within nine months after a patent issues from a patent application filed on or after March 16, 2013, a third party can challenge the patent in a post-grant review decided by the USPTO.  Post-grant reviews will be costly, time consuming for patentees and may have burdensome discovery obligations for the patentee.  Filing applications prior to March 16, 2013 will eliminate the possibility of a post-grant review and the obligations that are imposed on a patentee during the post-grant review process.

    On March 16, 2013, patent law in the United States will change significantly.  If you are considering pursuing applications directed to outstanding disclosures, have the opportunity to convert any provisional applications in advance of the one-year expiration or are considering filing any applications, in particular CIPs, it may be advantageous to file prior to March 16, 2013.