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The America Invents Act – Panacea or Just Pain for the PTO?

Written by Charles Gorenstein
Partner, Birch, Steward, Kolash & Birch
Posted: November 27, 2011 @ 8:00 am
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Anyone interested in reading this is likely old enough to have heard the old saying “Be careful what you wish for – you may get it.” Now we have it. Many people situated variously within and outside of the patent system of the United States urged the adoption of first-to-file. The underlying reasons included harmonization with the laws of other nations, and simplification or elimination of some proceedings in our own system, etc. with a view toward curing some of what has been ailing the U.S. patent system. The day, March 16, 2013, is now approaching when first-to-file will be a reality.

There are many questions about the scope and possible impact of the AIA. Exactly how it will all play out remains to be seen. A significant question is what will be the likely impact of the AIA upon the operations of the USPTO, an organization that has been so greatly over-burdened in recent times.

The burden on the USPTO will increase as it assumes broader responsibilities relating to post-grant practice. That much appears to be a given. It will not be surprising to find that first-to-file practice will, additionally and undesirably, have the effect of increasing the number of new applications filed and, thus, the examination burdens on the Office.

To state the obvious, under the first-to-file system, the date on which any inventor may have made his or her invention will be of virtually no consequence for establishing rights to the invention or overcoming any prior art. An inventor will have nothing to rely upon except the disclosure actually filed in seeking a patent, which will be effective only as of its effective filing date. Simply stated, to protect one’s opportunity to obtain a patent for an invention, there will be no substitute for submitting a good disclosure, supporting all claims to the invention, as early as possible.

So what about prior publication of the invention by the inventor? New Section 102(b) provides that a disclosure of an invention within one year before the effective filing date is not prior art if that disclosure was made by or on behalf of the inventor. Moreover, Section 102(b) provides that subject matter disclosed by another person (independent from the inventor) within one year of the effective filing date is not prior art to the extent that the subject matter had been disclosed previously, but within one year of the effective filing date, by or on behalf of the inventor. This might appear to provide some sort of “safe harbor” against prior art for a period of one year once an inventor publishes his invention. It may create a harbor, but the harbor does not appear to be so safe.

Recognizing that the full meaning and every possible nuance of new Section 102(b) cannot be determined or presumed at this juncture, it seems fairly clear that the language of the statute provides a safe harbor of a sort for the one-year period after publication by an inventor for “the subject matter disclosed.” There appears no logical basis to presume or expect, however, that the initial publication by an inventor will negate the prior art impact of everything that might become part of the prior art after that publication but before the effective filing date of an application for the invention.

Let’s consider a scenario that does not appear unlikely. Let’s assume that Mr. Smith makes an invention in January of 2014, modifying pre-existing technology in some manner that would be considered unobvious at that time. Smith publishes his invention promptly, also in January. Suppose that, for any reason, or for no reason at all, Smith does not file an application to patent his invention until September of 2014. In July of 2014, after Smith’s publication of his invention and before his filing date in September, Jones publishes a paper revealing previously unknown information concerning a technology relevant to the Smith invention. By the terms of the statute, anything in the Jones publication that was not part of “the subject matter disclosed” in January by Smith can be applied against any claim to Smith’s invention, very possibly being combined with other prior art to demonstrate that Smith’s invention would have been obvious as of the effective filing date of Smith’s application. It appears that Smith’s earlier publication of the invention, with presumably little or no discussion or recognition of the subject matter set forth in Jones’s subsequent disclosure, will not be of much value in eliminating Jones as prior art.

Thus, U.S. patent application filers will have to come to grips with the fact that the first-to-file system creates new risks which cannot be avoided by proving an earlier invention date. Delaying the filing of an application for any purpose, i.e., for further developing or refining an invention, results in such risks. This encourages the filing of more applications than may have been filed under prior U.S. practice, perhaps with each application being more narrowly focused.

New Section 102(b) provides that an earlier disclosure shall not be considered prior art with respect to a claimed invention if the earlier disclosure was obtained directly or indirectly from the inventor or a joint inventor, or the subject matter disclosed was commonly owned with the application as of the effective filing date. Thus, serial applications from the same inventor(s) or owner will not be prior art with respect to each other. This also promotes, or at least facilitates the filing of an increased number of new applications as compared to traditional practice under the first-to-invent system. The USPTO, already heavily burdened, may very well see its new application workload increase after March 16, 2013.

A large part of the USPTO workload is based upon applications filed by foreign nationals who first filed in their own countries. For similar reasons, the USPTO may see a larger number of those new U.S. applications as well.

Other countries, which have long had first-to-file patent systems, often see a large number of new applications, each having a relatively narrow focus upon a specific invention. In some cases, foreign applicants will combine several of their own national applications into a single application in the United States. Often, the application for the United States will be an edited and improved version of the original disclosure to assure that the disclosure satisfies U.S. standards.

From March 16, 2013 the foreign applicant for a U.S. patent must rely exclusively upon his or her foreign priority application disclosure to overcome a reference that predates the U.S. filing date. Accordingly, the foreign application must support whatever is being claimed in the U.S. application. If there is any concern that a foreign application is not sufficient, but must be modified or enhanced to support claims in the U.S., it is important for the foreign applicant to do that as promptly as possible, and file as early as possible in the U.S., rather than waiting for the end of the priority period. That will have the effect of encouraging more and earlier filings in the U.S. It will also have the concomitant effect of discouraging foreign applicants from delaying any U.S filing to combine with other applications. All of this will likely contribute to the filing of a greater number of new U.S. applications.

None of this should really be very surprising. The U.S. will now become a country with a first-to-file patent system. Application filings are likely to follow the patterns seen in other countries with similar systems – a greater number of applications, each with disclosure and claims typically more narrow than has been the practice under our long-standing first-to-invent system. The USPTO is going to have to examine that greater number of applications.

It’s important to consider, also, some factors which may have the opposite effect on the USPTO workload concerning new applications. If more applications are filed with narrower disclosure and claims than in the past, it may occur that the USPTO will have to devote less time to presenting and processing restriction requirements. Should that occur, it would free up some amount of time now spent by examiners in restriction practice and may serve, generally, to shorten the average pendency of applications. It is conceivable that applications more narrowly focused may prove to be marginally easier to examine, and the total hours required for a reasonable, competent examination could decrease slightly.

Another factor may be the manner in which the USPTO asserts, or does not assert, rejections based upon double-patenting, especially obviousness-type double patenting. The AIA, apparently, includes no provision to alter the basic premise that an inventor is entitled to “a patent,” traditionally interpreted to mean one patent per invention. While above-discussed factors might encourage applicants to file serial applications relating to developments having common underlying subject matter, the possibility of encountering objections or rejections based upon obviousness-type double patenting should have the effect of discouraging applicants from filing too many applications too similar to one another.

Only time will reveal fully the impact that the AIA will have upon the burdens and practices of the USPTO. It would appear, however, that anyone hoping that first-to-file will somehow enable the USPTO to accomplish its mission more easily may be wishing for too much.

About the Author

Charles Gorenstein is a partner with Birch Stewart Kolasch & Birch, a highly respected international intellectual property law firm committed to obtaining and enforcing intellectual property rights for its clients. Mr. Gorenstein has been engaged in the practice of patent law and other aspects of intellectual property law since 1972. His practice emphasizes all facets of representing clients with regard to litigation, negotiations, and licensing. Mr. Gorenstein has litigated, tried and/or settled favorably dozens of cases brought in U.S. district courts and the International Trade Commission, and he has represented parties in several appeals to the U.S. Court of Appeals for the Federal Circuit.

8 comments
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  1. I agree with the author that the AIA “grace period” provides some limited prior-art immunity to subsequent independent publication by another during the one year period (a heavily debated issue on this forum and elsewhere). However I have never considered it advisable to deliberately rely on the grace period under either regime, or on swearing behind under the F2I regime. IMHO, filing as early as possible should still be the norm, with the grace period only there to cover temporary lapses from that norm.

  2. Yes, there will be many changes, and some unknowns, as the AIA goes into effect.
    But:
    Re possible increased filings [if that occurs], could not the PTO hire more examiners, IF Congress does not steal the increased fees?
    Re the consequences of one’s prior publication not containing relevant details published by someone else before one’s filing date, how will that different from the present situation when one cannot validly prove one’s complete invention of those details prior to said publication date by some one else of those details?

  3. Here’s one practice change at least one firm says needs to already be made now. Start filing all new applications with declarations which will meet AIA inventor application declaration requirements. Otherwise every divisional or continuation thereof filed after March 16 2013 may require obtaining newly executed inventor declarations!
    Section 4 of the AIA amends 35 U.S.C. §115 to require a new additional statement that: “the application was made or authorized to be made by the affiant or declarant.”

  4. Here is how I covered first of file and the 102 exceptions for the CT Inventors Association. http://bit.ly/firsttofile

    Candid comments welcome on the You tube page.

  5. Mark, that was an interesting video. Particularly the data about which areas of technology have the most prior art citations that are less than 1 year old. Kudos for providing a good service to the CT inventors. BTW, the audio was very difficult to hear on my computer, for whatever reason.

  6. Ron,
    Thanks for the feedback. It was fun to put together. Not sure what the audio problem was for you. It seemed to be OK when I checked it.

  7. Paul Morgan,

    How do you feel about the exception under AIA’s Sec. 4 => § 115(d)(2)(B)? Combining this new “out” with the overall evisceration of “intent to deceive” (removed throughout the statute) deeply troubles me.

    An “inventor” may feel that he cannot rightly make the oath, yet Big Corp can still proceed with patent activies under this new exception based on what Big Corp wants to believe – without any real detriment of actual determination of whether the oath does apply.

    This exception turns the oath into a joke because the person who rightly should make the oath can refuse (for whatever reason – including honestly believing that they are not a first true inventor), but Big Corp can brush the oath requirement aside and proceed with the application process.

    The “essence” of this change is to allow “paper inventors” and sidestep the prototypical US historical basis of inventorship first residing in the inventor. Big Corp now is virtually the first inventor with no “oath” impact for false oaths – there is no penalty for Big Corp for being wrong in what they claim if they use the § 115(d)(2)(B) exception path.

    I do hope that whatever “substitute statement” the Office comes up with recognizes the substantial possibility of abuse here.

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