FIRST TO FILE PATENT SYSTEM

INTRODUCTION

Effective March 16, 2013 the US Patent system undergoes a fundamental shift. The US will go from a “first to invent” system to a “first to file”. This will have significant implications in protecting and exploiting intellectual property.

Briefly, the US patent system protected the rights of the first person to make an invention. There were exceptions but that was the general principle. It was important for inventors to document when they made their discovery for ultimately, the first inventor could prevail over a later inventor even if the later inventor first filed a patent application.

The law now recognizes the first inventor to file a patent application. This will create greater pressure to promptly file patent applications. Filing a patent application is a serious undertaking. The economy and relative simplicity of filing provisional patent applications will become appreciated.

But what does the new law mean?

In one example, a public disclosure by a third party of an invention prior to the March 16, 2013 First to File Date will block the patent rights of an inventor filing after March 16, 2013. §102(a)(1) After March 16, 2013, the inventor can’t rely on proving he/she was the first to invent (and therefore owner of the invention). One take away is to file your patent application before March 16, 2013.

One important exception to the new first inventor to file rule is that an inventor can disclose his/her invention up to one year prior to the filing date. An intervening disclosure or sale by a third party does not create prior art since the invention was disclosed by the inventor within the one year grace period. Note the grace period applies only to the inventor. It allows the inventor to protect the invention prior to filing by publishing the invention up to a year before the filing date.

Note that the inventor must prove by means of an §130 affidavit or otherwise that he/she is, in fact the inventor of the disclosed invention. What is significant is that the inventor may ultimately have to use records used to prove first inventorship under the old law. Therefore don’t throw out the laboratory notebooks or work papers. They still may be needed to prove you are the inventor under the prior disclosure exception (even though the new law is supposed to be based on the first inventor to file). Also document communications made to others regarding the invention. You may have to prove that the entity that disclosed your invention received the information directly or indirectly from you and therefore the disclosure is not prior art to your invention. The ultimate goal is to demonstrate the disclosure is blocking prior art to others. It is a frequently asked question as to who should be included in the list of inventors. Note that in filing a US application, followed by filing a PCT application within the one year time limit, the listing of inventors must be identical to avoid the first application acting as prior art to the PCT application. §102(a)(2). Therefore don’t make it a club list. Peoples’ interest and activities change over time and they may become unavailable or unwilling to sign documents necessary for the prosecution of the various applications. This can create large problems. The threshold question in determining inventorship is who conceived of the invention. Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, isirrelevant. MPEP 2137.1.

01/25/13