Some More Heretical Thoughts on Strategies for Coping with First to File Under the America Invents Act*
|Written by Eric W. Guttag
Eric W. Guttag IP Law Office
Posted: October 5, 2011 @ 12:20 pm
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.
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