Some More Heretical Thoughts on Strategies for Coping with First to File Under the America Invents Act*

By Eric Guttag
October 5, 2011

Now that the “ink is dry” on the American Invents Act (which I refer to as the “Abominable Inane Act” or AIA), it’s now time to consider how to cope with (and even take advantage of) the AIA. See my prior article — American Davids of Innovation, Start Your Engines: Strategies for Coping with First to File Under the America Invents Act. Take advantage of the AIA? Oh, yes. I’m referring to the new “grace period” provision in Section 3(b)(1) (Exceptions for Disclosures Made 1 Year Or Less Before The Effective Filing Date Of The Claimed Invention) which will eventually become new 35 U.S.C. 102(b)(1) which may allow the inventor/patent applicant to have his/her cake and eat it too, come March 16, 2013 when this provision of the AIA goes into effect.

New 35 U.S.C. 102(b)(1) says the following:

A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) [i.e., 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] if:

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. (Emphasis added.)

So what does this AIA “mumbo jumbo” mean in plain English? Well, to me and especially to others who have previously opined on this provision of the AIA, it means you not only don’t blow “novelty” in the U.S. by “publishing” the subject matter of your claimed invention (although you’ll blow “absolute novelty” elsewhere, including Europe, unless you do what I suggest below), but you can essentially “foul the nest” of others that follow after your “published” date. Even better, when you “publish” the subject matter of your claimed invention, you also put a non-patent application “date stake” in the ground as to what you have “published” that is resistant to subsequent intervening “prior art” of third parties when you do file your U.S. application (within a year of that “published” date). See my article cited above which discusses the issue of subsequent intervening “prior art” of third parties that occurs after your invention date but prior to your patent application filing date.

While that reading of new 35 U.S.C. 102(b)(1) may seem weird, my interpretation (as well as others before me) is that this portion of the AIA suggests that’s what was meant and intended. In fact, new 35 U.S.C. 102(b)(1) could well be a “golden egg” when used as part of a “strategy” for “staking out” what’s “published” in non-patent application publications that avoids (or at least minimizes) the impact of subsequent intervening “prior art” of third parties before you get to the point of actually filing the first non-provisional (and in many instances provisional) U.S. patent application(s). In fact, this strategy may lead to another interesting version of “leap frog” that occurs in current U.S. patent interference practice (under the current “first to invention” regime to be replaced by the “first to file” regime of the AIA), only not “backwards” towards the earliest invention date (as in the current “first to file” regime”), but instead, “backwards” towards the earliest “published” date(s).” (And, yes, there could be multiple “published” dates to worry about in this new game of “leap frog” under the AIA)

Now I did say above that “publishing” before patent filing would “blow” your rights in “absolute novelty” countries, such as Europe, didn’t I? But here’s how you can add ice cream to your cake to make it “a la mode,” as well as avoid the “absolute novelty” bar problem: first file your U.S. patent application (preferably as a U.S. provisional patent application for cost reasons and to avoid starting your patent term ticking), and then “publish” whatever is in the filed patent application (or at least that portion that will be a fatal “novelty/obviousness” bar to patenting by subsequent third parties). In that way, you get the benefit of that priority document/date you’ll need to avoid “absolute novelty” bars during later international filing, yet also make it excruciatingly difficult for others who follow to try to “get in the game” with their own subsequent patent filings. And if you play it right, you may even be able to repeat this process with subsequent patent filings/“publications” of improvements/modifications/additions to the original subject matter disclosed/“published” at the start. (You may also be able to avoid “absolute novelty” bars with regard to these improvements/modifications/additions if you can position them as being “inventive step”/“obviousness” issues, and thus, again, have your cake and eat it too.)

If you feel queasy now after what I’ve said, I don’t blame you. I’ve yet to do my first complete reading of the AIA (all ~150 pages of it), and what I’ve seen so far already gives me nightmares. The AIA a very confusingly worded in spots, and rivals the ambiguous wording in several portions of the Hatch-Waxman act. But if new 35 U.S.C. 102(b)(1) is any predictor, there may yet be some additional IP strategy “golden eggs” to hatch in the AIA, some of which might even shock those who pushed/supported the AIA in the first place. So stay tuned as I continue to read the monstrosity that the AIA is.

*© 2011 Eric W. Guttag.

The Author

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 23 Comments comments.

  1. Gene Quinn October 5, 2011 12:26 pm

    EG-

    We are going to have to agree to disagree with respect to some of what you wrote.

    I do think you are right when you point out that disclosure (whatever that means) prior to filing a patent application does not prevent the inventor from obtaining a patent in the U.S. Therefore, we do not have an absolute novelty system. Of course, if you avail yourself of the provisions of 102(b)(1) you will have forfeited rights overseas in absolute novelty countries, as is the case now.

    However, you say: “when you “publish” the subject matter of your claimed invention, you also put a non-patent application “date stake” in the ground as to what you have “published” that is resistant to subsequent intervening “prior art” of third parties…”

    I think that is incorrect. I know many believe that to be the case. I also know a growing number of people do not believe that to be the case. The USPTO seems to disagree in recent statements on the website. Of course, the legislative history (particularly the remarks of Senator Kyl) suggest you are correct. The trouble is what this would mean to patent law. It would not create a first to file system, but a first to publish system that would give the first publisher the option to file a patent while having nothing from the same subject matter field being used against them as prior art if it was subsequent to the disclosure. That can’t be how the courts will interpret 102(b)(1), and it seems inconsistent with how the USPTO is interpreting. For more see:

    http://ipwatchdog.com/2011/10/04/prior-art-america-invents-uspto-explains-first-to-file/id=19571/

    This debate about what 102(b)(1)(B) actually means demonstrates the mess created. Something as fundamental as what is prior art is now in question. That shouldn’t be the case.

    Cheers.

    -Gene

  2. EG October 5, 2011 12:52 pm

    Gene,

    That’s OK to “agree to disagree.” I did say the AIA was the Abominable Inane Act, didn’t I? And I’m not saying this is necessarily a “good thing” for the U.S. patent system.

    But my interpretation of this provision in Section 3 is based on how it reads “literally” to me (as it does to others). For some judges, like Justic Scalia, who don’t consider the legislative history to be relevant, all they need is the “plain wording” of the statute. If this provision of Section 3 was not intended to be read the way I have, as have others, then the wording is, indeed, very strange (not to the AIA isn’t a strangely worded Act, which it is).

    We’ll also have to wait and see which “interpretation” the courts accept (which will be several years in the future as this provision of the AIA won’t be in effect until March 16, 2013). How I hate the AIA!

  3. American Cowboy October 5, 2011 2:17 pm

    EG, I have a hard time seeing what you suggest as a “strategy” to embark upon. As I understand it, your strategy contemplates that the person implementing the strategy believes he is in a race with a rival and takes steps to damage the rival — steps that if not handled perfectly can damage the implementer. I think it unlikely we will find ourseleves in that position frequently.

    If the facts play out right, one may want to use your legal analysis to defend the position of the early discloser in hindsight, but not as a pre-planned strategy.

  4. EG October 5, 2011 3:02 pm

    “If the facts play out right, one may want to use your legal analysis to defend the position of the early discloser in hindsight, but not as a pre-planned strategy.”

    AC,

    Not if you agree with my interpretation of what 102(b)(1)(B) means, which others have agreed with as well. I’m also not focusing in this strategy primarily on “damaging” rivals, but on “preserving” the ability to file on the very subject matter “published” later, thus avoiding or at least minimizing what those rivals could do by stepping in with intervenng prior art before I file that patent application. (Remember also that what the AIA “first to file” regime will create is both “novelty” and “obviousness” issues with any third party prior art that is before the effective filing date.) Again, it all depends on whether you accept this interpretation of 102(b)(1)(B), and I definitely “reasonable minds” who don’t agree with this interpretation. In any event, thanks for you comment, the discussion is what is important, no necessarily agreement on what the outcome is/should be which I’m certainly not clairvoyant on.

  5. EG October 5, 2011 3:07 pm

    AC,

    Let me also clarfiy that my reference to what is being “published” is to preserve LATER filing of the patent application. The way I previously worded the sentence might give you the impression that I was referring to “publishing” after filing, which is, instead, my “a la mode” strategy which is intended to “damage” rivals, yet preserve the ability to file internationally in “absolute novelty” countries.

  6. Blind Dogma October 5, 2011 4:22 pm

    EG,

    You are playing with some rather large stakes with anything except filing (in your article a Provisional) prior to disclosing. – Filing first prior to disclosing, even if that filing is a provisional, moots the entire exception discussion, and for that reason, will be set aside for the moment.

    Not saying (for this argument) that the exception is or is not a personal exception only, but the “what if your wrong” risk question becomes…

    What if your wrong?

    If you are wrong, and the exception is only a personal exception, (and you have not filed prior to your disclosure), your advice to disclose means that anyone with anything even remotely possibly might-be adversely affected (and who have independently invented) will be highly motivated to make a filing/disclosure of their own, but for only to PREVENT you from obtaining a patent that would interfere with their development efforts.

    Rather than creating a “golden egg, backwards leapfrogging safety zone” for your client, you have invited disaster. Any one of these now provoked disclosures/filings – if you are wrong – will prevent you from obtaining patent coverage. Your disclosure may prevent them from pursuing patent rights, but they will make a point of putting something out to prevent you from obtaining anything of a subject matter (and as Gene notes – subject matter is much different than disclosure). In fact – I will be advising my clients to actively PREVENT their competition who disclose prior to filing – even by a day – from obtaining anything remotely concerned subject matter wise that will damage my client’s development plans. There is NO downside to my clients at that point – and tremendous upside.

    You have now motivated the destruction of your client’s interests.

    What’s the point if no one gets patent rights? What’s the point of this potential Armageddon Scenario?

    Let me give you a clue – what groups disllike patents at the same time play the patent game? What groups would love to compete completely outside of a patent system tendency to upset the status quo?

    Now, what groups were heavily involved in pushing for the very headache causing language you see that is now Law? Haven’t you been warned that these lingusistic traps were purposefully placed?

    Take two.

    Add two.

    Get Four.

    Now let’s revisit the exception interpretation scenario again – could the law really be actually written to provide such an anemic protection?

    Take two…

  7. EG October 5, 2011 5:07 pm

    BD,

    You’re points are well taken, and certainly suggests that my enhanced “a la mode” option (file first, publish later) might well be the best option in using this strategy, especially if you have any interest in securing international patent rights. But for those are simply interested in the domestic U.S. market, the ability to do a non-patent publication first that puts a “date stake’ in the ground for what is disclosed in that publication might be considered a potentially reduced-cost and thus attractive option to “hold a spot” for a later patent filing that third parties can’t remove that “stake” with subsequent prior art prior to the actual filing. Admittedly, this isn’t a perfect strategy (as yours and others comments have revealed), and depends much on whether 102(b)(1)(B) will be interpreted the way I (and others interpret it). Nothing is for certain in this new “AIA world” (and repeating again how I hate the AIA). And given how poorly the AIA is drafted (and thought through), yes, such “anemic protection” could have been envisioned by this monstrosity of a law (and another “how I hate the AIA”). Thanks much for your comments/thoughts.

  8. Blind Dogma October 5, 2011 11:39 pm

    EG,

    You seem confused. The key is a FILING. You file. You win the race. The race is over.

    All other disclosures without filing run the risk question. All. Whether you are interested in only the doomestic market or not is rather besides the point. This does not “hold the spot” or date stake if you fail the risk point.

    Is that a risk your insurance would consider?

  9. EG October 6, 2011 7:10 am

    BD,

    OK, I get the message. And I’m not confused either. Peace. And thanks for the comment.

  10. EG October 6, 2011 7:23 am

    BD,

    One last thing: I HATE (WITH A PASSION) THE AIA! Provisions like 102(b)(1)(B) give me nightmares and Excedrin headaches. Live Long and Prosper, BD. And with that, auf wiedersehen.

  11. Randy L October 6, 2011 11:03 am

    Eric,
    I’m not an attorney, but here’s a problem I see with publication, assuming it will work more or less as you assume. Say that what you publish discloses only what would be covered by a broad claim. For instance, say you’ve invented the chair, and then developed it further into the rocking chair. If your publication only disclosed the chair, couldn’t anyone who thought of the “rocking chair” improvement immediately publish that and cut off your ability to claim that? So, 1) you’d have to have all ramifications worked out before publishing, making you ready to file for a patent, and 2) if you publish, your secrets are open to the world years before you have patent protection. The result is that publishing doesn’t make sense and the “One Year Rule” is gone. I bet I hate this bill more than you!

  12. Paul F. Morgan October 6, 2011 3:53 pm

    I agree with Eric and others, and I do not think what the PTO has said so far about the effect of the new “exception” grace period is necessarily inconsistent with that, rather than just incomplete. Wait to see what the PTO tells Examiners to do, more specifically, and puts into the MPEP and/or new rules.

    The far more difficult to resolve AIA ambiguity is in 102(a) as to prior secret commercial use and secret on-sale activities. The PTO is going to have to deal with that within the next 17 months also.

  13. Mark Nowotarski October 6, 2011 5:09 pm

    Randy,

    Here’s another interesting thought. Suppose you invent the chair. You publish a description of the chair on the internet. It’s available to the public, but in order to view it, a person has to register with the web site. Now you have a record of everyone who has seen your publication.

    If any of those viewers files a patent application on an improvement to the chair, do you have a prima facie case of derivation? If so, will anyone ever look at your publication?

  14. Blind Dogma October 6, 2011 5:18 pm

    Mark,

    Your simplistic notions are far too simplistic.

    Now you have a record of everyone who has seen your publication.

    Easily defeatable – ever hear of screenshots?

    Once disclosed, there is no way to control where that information goes.

    None.

  15. Randy L October 6, 2011 5:26 pm

    Mark,
    Interesting, but if someone makes an actual patentable improvement to an invention, derivation shouldn’t apply. The bottom line is that our delicately balanced and workable patent system has been hacked up by people who didn’t consider one tenth of the possible consequences. I don’t think that a workable One Year Grace Period and First-to-File can co-exist.

  16. Mark Nowotarski October 6, 2011 5:55 pm

    “ever hear of a screen shot”

    Of course. But my point was that there many different possibilities for public disclosure that can create positive benefits for an inventor without unduly compromising his/her patent rights. It just takes some creative minds to work them out.

  17. Stan E. Delo October 6, 2011 7:08 pm

    Randy writes in part:
    Mark,
    Interesting, but if someone makes an actual patentable improvement to an invention, derivation shouldn’t apply. The bottom line is that our delicately balanced and workable patent system has been hacked up by people who didn’t consider one tenth of the possible consequences. I don’t think that a workable One Year Grace Period and First-to-File can co-exist

    Randy-
    Very well said I am afraid. I canna find any good reason why the rest of the world should even consider a US grace period at all. The really tragic part is that the Senate especially seems to be unable to understand how much damage they might have already done. It is not really Reform at all, but just a shift in the patent rights conferred to the paying parties. The really tragic part comes into play when the corporate rabid dogs have chased everyone out of town, and they suddenly realize that they have forgotten how to innovate somewhere along the way. Pretty hard to kill independants though, as they tend to defy traditional analysis sometimes.

    Cheers,
    Stan~

  18. Blind Dogma October 6, 2011 8:24 pm

    But my point was that there many different possibilities for public disclosure that can create positive benefits for an inventor without unduly compromising his/her patent rights. It just takes some creative minds to work them out.

    Sorry Mark – your point is vapid (Mind you, this is not personal – it is just your point that I am calling vapid).

    And just as it took no more than reading your vapid point than to come up with a way to defeat that point, would it take someone else but a split second to find a way to defeat and not only “undulyL” – but utterly compromise your beloved nascent patent rights with anything short of an actual filing.

    For every “creative mind” you have “working them out” there are six more working to defeat whatever you work out.

    The “creative” route is a dead end – that is why the best defense is cold, hard solid law. No muss, no fuss, no “creative” working out.

  19. Randy L October 6, 2011 8:49 pm

    Stan,
    I suspect that you, like me, are one of those independents who’ll have to defy “traditional analysis.” To the attorneys out there, any chance that a challenge on constitutional grounds might get in the way of First-to-File?

  20. Stan E. Delo October 6, 2011 9:26 pm

    Randy-
    You seem to have homed in on the really relevant issue, as in does this this attempt at *Patent Reform* in fact violate the Constitution of the United States of America? The Constitution seeks to reward *inventors* for coming forth with their inventions, instead of keeping them secret, and the quid pro quo is to give the inventors a limited time of exclusivity for all their efforts.

    There is no mention in the Constitution of any First Inventors To File, nor should there ever be in my opinion. Some might have forgotten what the term Inventor actually means, as in the first to *Invent* it, and Not the first inventor to file. In fact this latter scenario seems to suggest that the filer is in fact not the Real inventor, but perhaps just their *representative*

    There might be several challenges to the Constitutionality of the America Invents Act, and I sincerely hope that they succeed! The language is so mucked up that it would be much better to just start all over again, but of course Leahy and et al will be having none of that. Just the sheer economic harm of the act for small businesses should be a major red flag for Federal entities that are trying to help smaller business concerns

    Time to get busy with a few more potential applications, before US patent law is rendered mostly passe`

    Stan~

  21. EG October 8, 2011 7:18 am

    “To the attorneys out there, any chance that a challenge on constitutional grounds might get in the way of First-to-File?”

    Randy,

    Will there be a challenge on constitutional grounds? Possible. Likelihood of success? Highly unlikely to succeed. Constitutional arguments based on the Patent Clause generally don’t play well in court. That’s based on what happened in the 2006 patent fee diversion case of Figueroa v US which I felt had a decent chance to succeed on one or more constitutional arguments, including fee diversion being a tax on innovation and thus in conflict with the Patent Clause. But that argument went nowhere with the Federal Circuit. Basically, with the exception of providing only limited in time exclusive rights, Congress can pretty much set the rules for under what conditions the applicant gets the patent, including being first to file, not necessarily the first to invent.

  22. Stan E. Delo October 8, 2011 3:32 pm

    EG-

    After watching hundreds of millions of lobbying money being literally Thrown at patent reform over the last 6 years or so, the proponents still don’t have a clue about how much damage it might do, as they never even considered that factor adequately that I am aware of. Ron K did some very careful studies about some of the damage that might be done, but they seemed to be given short shrift in the rush for Congress to *fix^ the US patent system.

    Of course they will probably never *witness* the damage that they have done, because either they got re-elected, so who cares? or they will be gone, and will not be needing re-election. The only hope I can see is a perhaps a Tarafalos type of case to proactively challenge the law *as written*, or it might take a decade to re-settle through hit and miss various types of court decisions. Maybe if we could convince the USPTO to try to suggest some definitions for new terms like *Disclosure* and what is meant by *or otherwise available to the public* and what other terms actually mean in a legal or practical sense to Congress, it might make things a little less murky. At least that way there might not be so much guess work and potential financial harm done to inventors going forward into the Brave New World of FITF.

    Hasta la vista-
    Stan~

  23. EG October 9, 2011 9:27 am

    I couldn’t agree with you more, Stan. That’s why I cal the AIA the Abominable Inane Act. But as unhappy as many of us are about the AIA, we still need to figure out ways to cope with/combat it. That’s what my posts on the AIA have been about: thinking of ways to minimize it’s impact and potentially even take advantage of it to the surprise/chagrin of the Goliaths. But thanks for the comment. And auf wiedersehen.