BEHIND THE FIRST TO FILE RULES

Introduction

As you are probably aware, the USPTO rules changed March 16, 2013 to
make the first inventor to file eligible to obtain a patent. (Prior to this change in law, patents were awarded to the first person to invent, regardless of whether another (later inventor) first filed an application.)  Implementation of this “first to file” rule created a concern that there would be a rush of inventors to the Patent Office door in order to protect their patent rights.

The new rules are not that simple. The inventor or his assignee is given
protection.  The inventor can cut off the rights of third parties, including other inventors, by being the first to file an enabling patent application (either a provisional or non-provisional application)  in conformance with Rule 102 (35 U.S.C. 102).   The inventor can also cut off the rights of others by making a disclosure of the invention in conformance with Rule 102.

Discussion

The rule §102(a) does affirmatively state that “a person shall be entitled to
a patent unless: (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, or
(2) the claimed invention was described in an issued patent, or in an
application published and names another inventor and was effectively filed
before the (inventor’s) effective filing date of the claimed invention.”

Thus, it would seem that any disclosure of the invention made by public use, marketing for sale, or appearing in any printed publication would prevent the invention from being patented.  However, there is more.  Rule 102(b) provides protection to the inventor.  (Hint: Rule 102(a) and 102(b) should be read together.)

Rule 102(b)(1) states that disclosures by the inventor made 1 year or less before the inventor’s effective filing date are not prior art to the claimed invention (inventor) if:

(A) the disclosure was made by the inventor or by someone that acquired the invention directly or indirectly from the inventor; or
(B) the subject matter disclosed had, before such effective filing, had
been publicly disclosed by the inventor (assume “on sale” or “public use”) or by someone that acquired the invention from the inventor.

Further, Rule 102(b)(2) states a disclosure is NOT prior art to a
claimed invention if:

(A) the subject matter disclosed (remember within 12 months of the inventor’s patent filing date) was obtained directly or indirectly from the inventor;
(B) the subject matter disclosed had, before such subject matter was
effectively filed, been publicly disclosed by the inventor or by another who
obtained the invention from the inventor.

What does this mean:

The law provides the first person to file is entitled to the patent unless the invention has been publicly disclosed, publicly used, placed on sale or appears in a printed publication including a patent or published patent application.  However, such activity, i.e., publication, public use, disclosure or marketing, by the inventor or a person that obtained the information form the inventor,  will not bar the invention from patent protection if such disclosure, etc. occurred less than 12 months prior to the inventor’s filing of the patent application.

Note, such disclosure, etc., by the inventor will bar another from being eligible to receive patent protection.  See Section 102(a)(i) & (2) above.

The inventor however, has a 12 month grace period beginning from the disclosure to file his/her application for patent.  See Section 102(b).

Conclusion

The first party to file a patent application for a patent is eligible for award of a patent unless the invention has been previously disclosed.  If disclosed, the invention is not novel.  However, if the inventor has made the disclosure, he or his assignee has 12 months to file a patent application.

This 12 month grace period is different that the patent law of most other countries.  Most countries require absolute novelty prior to filing of a patent application, i.e., most countries do not give the inventor a 12 month grace period.

Copyright David McEwing, 2019