Navigating Aspects of the First-Inventor-to-File Provisions of the America Invents Act

Vol. 5 No. 2

By

Jeffrey Karceski is a patent attorney with Thomas & Karceski, PC, in Washington, D.C. His primary area of practice involves patent prosecution and client counseling, and he has been involved with the enforcement of intellectual property rights before U.S. district courts and the U.S. International Trade Commission (§ 337 investigations). He can be reached at jkarceski@ip-counsel.net. This article is for informational purposes only and is not intended to constitute legal advice. This article is the opinion of the author and is not attributable to Thomas & Karceski, PC, or any of the firm’s clients.

This article is presented to provide guidance to foreign nationals who protect their inventions in the United States as part of a global patent strategy. While many of the guidelines may also assist applicants residing in the United States, this article examines how the first-inventor-to-file (FIF) provisions included in the America Invents Act (AIA), which was signed into law on September 16, 2011, are expected to change, or at least influence, the patent strategies employed by foreign nationals seeking to patent an invention worldwide.

This article is intended to provide general guidance with respect to filing practices for the majority of patent applications that are filed as a part of a routine, global patent strategy, from the perspective of a foreign national. This is not intended to address every conceivable consideration that might impact a particular filing strategy or a particular patent application.

As should be apparent, the FIF provisions present a number of changes that may alter the filing strategies of foreign nationals seeking to ensure the maximum benefits provided by U.S. patent law while also minimizing the cost burden associated with the filing of patent applications worldwide. In light of these changes, many foreign nationals may now be asking how best to adapt their current plans for the filing of patent applications worldwide, so that they may be adequately prepared for the FIF provisions effective date of March 16, 2013. They also may be asking what changes in filing strategies and practices might be beneficial after the FIF provisions become effective.

In summary, foreign nationals are asking the following three questions about the impact of the FIF provisions on the filing of applications within a global patent filing strategy:

  1. What are the rules that apply to applications filed before or after March 16, 2013?
  2. What changes should be made to filing practice for patent applications in advance of March 16, 2013?
  3. What changes should be made to filing practice for patent applications after March 16, 2013?

These three questions are examined in the sections that follow.

While each foreign national will, no doubt, adapt his or her approach based on personal criteria applied to patent applications filed before and after March 16, 2013, the following thoughts are offered to assist applicants as they consider making changes to their respective filing procedures and strategies, now and in the future.

Applicability of the FIF Provisions to Applications before and after March 16, 2013

To broadly set the ground rules pursuant to the FIF provisions, a patent application will lack novelty if the invention described therein is patented, described in a printed publication, in public use, on sale, or publicly available anywhere in the world before the effective filing date (e.g., the priority date) of the application. Activities by the inventor (or those having derived knowledge of the invention from the inventor) within the year before the effective filing date, as a general rule, will not defeat novelty. After March 16, 2013, obviousness will be measured from the effective filing date of the patent application describing the invention rather than the time that the invention was made, as is currently proscribed.

As should be apparent, practitioners will be required to apply one of the (soon-to-be) old definitions of prior art or the new (under the AIA) definitions of prior art after March 16, 2013, depending upon the effective filing date of the patent application. In other words, both definitions of prior art will remain very much alive after March 16, 2013, at least until the prosecution of all patent applications under the (soon-to-be) old rules is completed.

As a further clarification, the FIF provisions apply to patent applications that are filed on or after the effective date of March 16, 2013, where the patent application presents subject matter that does not enjoy a claim of priority to an application filed before March 16, 2013. In other words, as a general rule of thumb, the filing of a patent application on or after March 16, 2013, containing new matter triggers application of the FIF provisions to that patent application.

Applications to Which the FIF Provisions Apply

While not exhaustive of all circumstances, the FIF provisions apply to patent applications in three commonly encountered instances. First, the FIF provisions apply to any patent application that is first filed on or after March 16, 2013 (i.e., it is itself a priority patent application). Second, the FIF provisions apply to any U.S. continuation-in-part (CIP) patent application that is filed on or after March 16, 2013 (i.e., a patent application presenting subject matter for which there is no priority claim to a patent application filed before March 16, 2013). Third, the FIF provisions apply to any U.S. patent applications that are filed claiming priority to a patent cooperation treaty (PCT) patent application but not filed as a national phase entry patent application, where the U.S. patent application contains new matter. In other words, the FIF provisions apply to so-called “bypass” patent applications filed on or after March 16, 2013, that contain new matter.

For applications where the FIF provisions apply, prior art will be applied during prosecution based on the new definitions of prior art.

Applications to Which the FIF Provisions Do Not Apply

Applications to which the FIF provisions do not apply include applications that contain subject matter enjoying a claim of priority to a patent application filed before March 16, 2013 (i.e., an effective filing date before March 16, 2013). The FIF provisions do not apply to U.S. patent applications that are filed with a valid priority claim under, for example, the Paris Convention to patent applications filed before March 16, 2013 (thereby presenting an effective filing date before March 16, 2013). Similarly, the FIF provisions do not apply to continuation and divisional patent applications claiming priority (under 35 U.S.C. § 120 or 121) to patent applications filed before March 16, 2013. Moreover, the FIF provisions do not apply to national stage entry patent applications that claim priority to PCT patent applications that were filed before March 16, 2013. Similarly, the FIF provisions do not apply to any U.S. nonprovisional patent application claiming priority to a U.S. provisional patent application filed before the effective date of March 16, 2013.

For applications where the FIF provisions do not apply, prior art will be applied during prosecution according to the (soon-to-be) old definitions of prior art.

Preparations Prior to March 16, 2013

While it behooves each practitioner to understand the changes in the definitions of prior art and the potential impact of those changes on the prosecution of a particular patent application, the “unknowns” associated with the changes to the rules are perhaps the single greatest concern for most foreign nationals. In other words, prior to March 16, 2013, the fundamental question preceding the effective date of the FIF provisions is how best to minimize potential liabilities in connection with the filing of patent applications in view of the impending changes to U.S. patent law.

Without commenting on each of the specific changes to the rules with respect to prior art, foreign nationals may wish to consider advancing the filing of patent applications so that they are filed before March 16, 2013. There are two advantages to adopting this approach.

First, it will take time for practitioners to fully appreciate the impact of all the changes that are implemented as part of the FIF provisions. By advancing the filing of patent applications before March 16, 2013, at least for those patent applications that may reasonably be advanced in their respective filings, practitioners may take comfort in the fact that the FIF provisions will not apply to such patent applications.

Second, there is always a fear of change and the unexpected. In other words, there is always a heightened sense of increased risk associated with changes in the law. The FIF provisions are no exception. By advancing the filing of patent applications before March 16, 2013, practitioners may rest assured that they have minimized any perceived risk associated with inventions that are being developed currently.

For purposes of these considerations, it has been assumed that most foreign nationals appreciate the devastating impact (vis-à-vis absolute novelty) of the disclosure of an invention on the patentability of the invention. Accordingly, it is assumed that foreign nationals generally follow the practice of filing patent applications before any disclosure of the subject matter contained therein.

Even after the effective date of the FIF provisions, absolute novelty provisions will continue to guide the behavior of foreign nationals with respect to the filing of patent applications worldwide. While there is no doubt that the FIF provisions will have an impact on the prosecution of individual U.S. patent applications, when considering the larger question of the protection of an invention worldwide, the basic considerations of absolute novelty effectively trump specific considerations that may arise under the FIF provisions, at least from the perspective of a global patent portfolio.

Procedures after March 16, 2013

After March 16, 2013, foreign applicants should keep in mind at least three considerations. The first concerns patent applications that include new matter. The second concerns the change with respect to the one-year grace period provided under U.S. patent law. The third concerns the filing of provisional patent applications in the United States.

New Matter

As noted above, the FIF provisions apply to any U.S. patent applications that are filed claiming priority to a PCT patent application but not filed as a national phase entry patent application (bypass patent applications) where the U.S. patent application contains new matter. The FIF provisions also apply to CIP patent applications. Therefore, if the applicant finds it necessary to file a bypass patent application or a CIP patent application on or after March 16, 2013, the applicant should consider filing two separate patent applications, if practicable.

In the case of filing a U.S. patent application based in part on the PCT patent application, the practitioner may wish to consider filing a national stage entry patent application containing the subject matter described in the PCT patent application. If possible, the practitioner separately may elect to file a new patent application that is directed to the new subject matter.

The same considerations apply to CIP applications. If a CIP application is to be filed after March 16, 2013, the practitioner may wish to consider dividing the subject matter into two separate applications. The first application may be styled as a continuation while the second is a newly filed patent application.

The filing of two separate applications may not be possible for many different reasons, not the least of which is the effect of the prior art on the two applications. If separate applications cannot be filed, the prudent option is simply to file a single application with the new matter, allowing the application to be examined under the FIF provisions.

On the other hand, if the applicant finds that it is possible to file two applications, each application potentially will be subject to different rejections because the rules governing applicable prior art will be different for each application. If this result is unacceptable to a particular applicant, the prudent course of action is to file a single application and permit the application to be treated, as a whole, under the FIF provisions.

One-Year Grace Period

The FIF provisions affect the application of prior art, specifically the inventor’s disclosure of the invention prior to the filing of a patent application.

Under the (soon-to-be) old rule, 35 U.S.C. § 102(b) permits a patent applicant to obtain a patent if the patent application was filed in the United States within a year of the public disclosure (also known as the “one-year grace period”). In other words, the filing of a patent application in the United States within one year of the inventor’s disclosure of the subject matter makes it possible for a patent to be granted for the invention in the United States.

The FIF provisions change the application of this rule. The FIF provisions effectively extend the one-year grace period to all patent applications regardless of the patent office where they are first filed. In other words, the FIF provisions permit a foreign national to file a patent application in his or her home country and take advantage of the one-year grace period in the United States.

Under the current rules, if a foreign national is aware of a disclosure by the inventor, the foreign national must file a patent application in the United States before the expiration of one year from the disclosure date. On or after March 16, 2013, the foreign national need not file the patent application with the United States Patent and Trademark Office (USPTO) to take advantage of the one-year grace period. Instead, the foreign national may file a domestic patent application to avoid the prior art effect of the inventor’s disclosure in the United States. In other words, while the practice of filing a patent application to take advantage of the one-year grace period has not changed, the patent office where the application is filed changes under the FIF provisions.

As should be apparent, this change under the FIF provisions is unlikely to have a significant impact on a particular patent filing strategy. However, this provision may have a considerable impact on the determination of the patentability of patent applications filed after March 16, 2013.

Take, for example, a patent application that is first filed in Japan. Before foreign patent applications are filed in other countries, but after the filing in Japan, it is discovered that the inventor published an article describing the invention exactly one year prior to the filing of the patent application in Japan. Under the currently existing rule, unless the U.S. patent application had been filed simultaneously with the Japanese patent application, it would not be possible to obtain a patent in the United States. Under the FIF provisions, however, it becomes possible to obtain a patent in the United States by claiming priority to the Japanese patent application. After March 16, 2013, the Japanese patent application satisfies the requirements for the one-year grace period.

Provisional Practice

The FIF provisions effectively moot, for foreign nationals, the practice of filing U.S. provisional patent applications as first-filed patent applications. Specifically, because the foreign applicant’s first-filed patent application becomes the focal point for evaluating the effect of prior art under the FIF provisions (i.e., the effective filing date), there appears to be little benefit in first filing a provisional patent application in the United States.

With this in mind, if the applicant is a foreign national, there remains at least one benefit to the filing of a U.S. provisional patent application after March 16, 2013, which benefit exists today. In particular, the requirements for the filing of a U.S. provisional patent application permit the filing of a disclosure that would not otherwise meet the strict filing requirements of a U.S. nonprovisional patent application. Similarly, foreign patent offices impose strict requirements on patent applications that they are permitted to receive.

In view of the foregoing, foreign nationals may wish to consider filing a U.S. provisional patent application if it becomes necessary to file a patent application but the written description that has been prepared does not meet the strict requirements for filing a nonprovisional patent application in the United States or if the written description fails to satisfy the requirements mandated by the patent office of the foreign national’s home country. Moreover, because the USPTO will accept provisional patent applications in a language other than English, the foreign national is not required to translate the written disclosure before filing the U.S. provisional patent application.

Conclusion

With the exception of advancing the filing of patent applications so that they are filed before the effective date of March 16, 2013, foreign practitioners should rest assured that their existing filing practices may be adequate for the transition to the FIF provisions under the AIA. While the FIF provisions will change the effect of prior art that is applied to patent applications and, therefore, will change the landscape of patent prosecution, it is anticipated that the procedures employed for the filing of patent applications under a global patent strategy should remain largely unchanged through the transition to the FIF provisions under the AIA.

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