BEHIND THE FIRST TO FILE RULES

As you are probably aware, the USPTO rules changed March 16, 2013 to
make the first inventor to file eligible to obtain a patent. This 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. The inventor
can also cut off the rights of others by making a disclosure of the invention in
conformance with Rule 102.
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.”
It would seem to be a broad category of events listed in Rule 102(a) that
could occur that would block the inventor’s right to patent. 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 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 does not include 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.
The law provides the first person to file is entitled to the patent unless the
inventor has made a public disclosure of the invention less than one year before
the inventor’s filing date. Remember the inventor’s disclosure can not be more
than 1 year before the inventor’s filing date. Also the inventor must file a patent
application. Rule 102(b) gives the inventor a one year grace period to disclose
the invention prior to filing for patent protection. Anything he or she discloses
will be prior art to a third party (including another inventor). Presumably the
inventor’s disclosure, made during the magic 12 months before the inventor’s
patent filing, will block the third party or third party inventor.