President Obama signs the AIA on Sept. 16, 2011, setting the stage for first to file.
The America Invents Act (AIA) was signed by President Barack Obama on September 16, 2011. The most significant changes to U.S. patent law did not go into effect right away. Rather, there were waves or phases of implementation. The second phase of AIA implementation was ushered in on September 16, 2012, which brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.
By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States is now a first to file country, abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a first to file system. There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point.
It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the re-patenting of inventions, but it does that as well.
Almost two weeks ago the United States Patent and Trademark Office issued two Federal Register Notices in anticipation of the U.S. converting from first-to-invent to a first-to-file regime. The first were the Changes to Implement First to File and the second was First to File Examination Guidelines. Both are important. The new regulations that make up 37 CFR are found in the former, but much of the meat and potatoes are found in the later. The Guidelines, which the USPTO says they are not obligated to follow, is where the Office spends most of the time comparing and contrasting old pre-AIA 102 with AIA 102. The Guidelines is also where the USPTO explains which cases they believe have been overruled (i.e., Hilmer and Metallizing Engineering) and which cases continue to have relevance. They also selectively cherry pick portions of the legislative history to back up their interpretations.
Frankly, we know that when the Supreme Court ultimately gets involved interpreting the AIA, which is a virtual certainty, the legislative history will play absolutely no role in interpreting the statute. This Supreme Court holds legislative history in near contempt. It is hard to argue with them on that point knowing how easy it is for something to be included into the legislative history. More interesting, however, will be whether the Federal Circuit will consider legislative history, or at least to what extent. But, as for now, the Patent Office is deferring to legislative history with respect to a number of items. On first glance nothing caught me as out of place particularly, and the Office has to rely on something given that Congress re-wrote the law and used different terminology for things that have had long-standing, well-known meanings.
Therefore, the question really has to be this: Did Congress mean what they said? Of course, that has multiple components: (1) Did Congress mean what they said in the actual text of the bill, which leaves a great many things open to interpretation; and (2) Did Congress mean what they said in the legislative history, which at times is some of the most clear writing you will ever read. The trouble, of course, is that they voted on the text, not the legislative history. Moreover, in one particular instance (relating to Metallizing Engineering) the USPTO relied on comments from Senator Leahy that only occurred after the Senate acted, which hardly seems reasonable to do give that the comment was after the fact and the exact type of remark that Justice Scalia and others seem to detest. How do we know that anyone other than one Senator believed that? How do we even know that was what that Senator believed when he voted? What a mess!
Washington—The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA). The provision, one of the hallmarks of the AIA, is a major step towards harmonization of the U.S. patent system with those of the United States’ major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents. The AIA also includes safeguards to ensure that only an original inventor or his assignee may be awarded a patent under the first-inventor-to-file system. The first-inventor-to-file provision of the AIA goes into effect on March 16, 2013, and represents the final implementation of the changes mandated by the AIA.
The USPTO also today published final examination guidelines setting forth the agency’s interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application. In particular, the agency’s final examination guidelines inform the public and patent examiners how the AIA’s changes to the novelty provisions of law alter the scope of what is prior art to a claimed invention and how the new grace period operates.
As a part of this all-access look behind the scenes I interviewed Q. Todd Dickinson, the AIPLA Executive Director who is also a former Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office. This interview took place at the conclusion of our day together.
In this segment of my two-part interview with Todd Dickinson we start by discussing how the AIPLA manages the daunting task of taking positions in virtually every IP issue that arises. We then transition into discussing first-to-file and the American Invents Act.
Without further ado, here is Part 1 of my exclusive interview with Todd Dickinson.
The United States Patent and Trademark Office (USPTO) announced today that it is creating a new proceeding designed to ensure the first person to file a patent application is actually the true inventor. The new proceeding will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent. If a true inventor is not the first to file, the true inventor may challenge the first applicant’s right to a patent by demonstrating that the first application is claiming an invention derived from the true inventor.
This new procedure, called a derivation proceeding, is required thanks to the enactment of the Leahy-Smith America Invents Act (AIA), which went into effect on September 16, 2011. The AIA ushers in a great many changes to patent law and procedure, with the most significant being the change from first to invent to first to file, which does not actually become effective until March 16, 2013. The flavor of first to file adopted by the AIA is not the typical first to file system seen in many other jurisdictions around the world. The American flavor still provides a grace period, although it is peculiar to the inventors own disclosures and can be defeated by subsequent disclosures of third parties. The grace period is, therefore, quite fragile to the point that it is virtually non-existent. Much concern was voiced, however, over whether one could learn of an invention and then win a race to the USPTO. That is where the derivation proceedings come into play. The U.S. version of first to file is better stated as “first inventor to file.”
Director Kappos delivering remarks during the FTF Roundtable, Sept. 6, 2012.
On September 6, 2012, the United States Patent and Trademark Office held a Roundtable on the campus of the USPTO in Alexandria, Virginia. The Roundtable event was for the purpose of the USPTO accepting feedback from the user community on the proposed examination guidelines to implement the first-to-file changes of the America Invents Act (AIA), which go into effect on March 16, 2013.
While there were many issues raised, the one issue on which there seemed overwhelming consensus (although not unanimity) was with respect to the USPTO’s interpretation of the new grace period. A substantial majority of those who offered comments disagreed with the USPTO’s interpretation of 102(b)(1)(B), which pertains to disclosures made by third parties. The USPTO’s interpretation of this provision was set forth in the Federal Register on Thursday, July 26, 2012.
After the pre-scheduled speakers concluded their remarks at the roundtable those in attendance were invited to make remarks. At that time I was recognized and went to the podium to speak on behalf of the USPTO interpretation of the grace period. After my remarks there were no other remarks, but a Q&A session began, with many of those who spoke asking questions of the USPTO Officials in attendance, who were surprisingly willing to provide insight into their interpretations. I say surprisingly because these events are typically not a forum where the USPTO shares information.
Every good invention starts out with an idea, but the answer to the question – can you patent an idea – is a resounding NO! See Can Ideas be Protected? Therefore, in order to obtain a patent and become an inventor it will be necessary to move from idea to patent, which means that travel along the path to invention will take time. As with any lengthy project, keeping notes and tracking progress, success and failures becomes exceptionally important.
In the United States we are still a first to invent country and will remain first to invent up to March 15, 2013. On March 16, 2013, the law changes and the U.S. will become a first to file country, but not exactly like the rest of the world. Inventors will be given an extremely narrow grace period even under the first to file provisions. See USPTO Publishes Proposed First to File Examination Guidelines.
As a first to invent country the party who invents first gets the patent even if they are the second to file a patent application, but this is true if and only if the first to invent has the proof required by the law to demonstrate that they were in fact the first to invent. For many independent inventors and small businesses they simply will never be able to prove they were first to invent because the records they keep are not capable of making the required evidentiary demonstrations.
At least over the last year there has been great debate on IPWatchdog and elsewhere about the meaning of the new grace period under the AIA. I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Further, I have explained that disclosures of third-parties who independently arrived at the invention will be used against the inventor. Said another way, there is no grace-period relative to third party, independently created disclosures.
Those who are even casually familiar with patent law and patent practice undoubtedly know that when dealing with inventions it is always better to file a patent application sooner rather than later. There are many reasons to file sooner rather than later, perhaps chief among them is to prevent the so-called statutory bar from preventing a patent from issuing. The most common statutory bar situation arises when a product that is the embodiment of an invention is publicly used or on sale in the United States more than 12 months prior to a US application being filed. In order to prevent a statutory bar an application needs to be filed promptly, but the 12 month grace period can lull inventors into a false sense of security.
Of course, if you are availing yourself of the privilege of the 12 month grace period in the United States you have already forfeited foreign patent rights. In most of the rest of the world an absolute novelty rule is followed, which means that you must have a patent application on file prior to making any sale, use or public disclosure of the invention. Some will bicker with this as being an overbroad statement, but not by much. If what you sell, use or disclose publicly informs about the invention (which is virtually always the case) you lose the ability to seek foreign patent rights unless you had a patent application on file prior to the informing event. Once again, even the current first to invent law in the United States favors filing early.
But what happens if two or more applications filed by different inventors define the same invention? The old saying is that the more things change the more they stay the same, which very well might be exactly what happens as we transition from interference practice to derivation proceedings.
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 new first-to-file mantra is “File early.”, “File often.” But I say, “How early?”, “How often?” Who needs to be rushing to the patent office as fast as they can, and who needs to be better prepared before they file in the first place.
An important consideration is how fast the technology in your field is evolving. A useful measure of how fast technology is evolving is the age of the prior art is that is currently being cited against patent applications in your field. If young art is being cited, your field is moving fast. If old art is being cited, your field is moving slow.
I took a look at several random samples of patent applications currently or recently examined to see how young the prior art was that was being cited against them. These random samples were divided into several fields of technology. There were 50 applications in each sample. The youngest art that was most recently cited against an application’s independent claim was identified. This was done by looking at the file wrappers available on the USPTO’s public PAIR web site.
Earlier today I spoke at the Practising Law Institute program on the America Invents Act. We had a good turnout in the room and an excellent turnout via webcast. The program was 4 hours long, and truthfully we could have gone on for at least several more hours without running out of material. For those who stayed online we ran long by about 20 minutes, and stayed talking with attendees and answering questions of live attendees for another 20 minutes. We are already talking about reprising the presentation for an audience at PLI’s New York City location on Seventh Avenue, so stay tuned.
There will be plenty of time to drill down on the particulars of the America Invents Act. The Act is dense, language choices from section to section in some places change and in other places remains the same, making you suspect that different terms must mean different things but the same term in different places has to mean the same thing, right? Our moderator, Denise Kettelberger (Faegre & Benson) said that patent attorneys should really read the Act about 10 times, which is really good advice. Every time you read it you notice something a little different, and during the presentation of others today I found myself taking notes and looking up things in the Act with new understandings. This is a major re-write of patent laws and not one that is at all simple.
That being said, I thought I might take this opportunity to provide a high level overview of the America Invents Act. What follows is discussion of 5 provisions contained in the Act. Look for an overview breakdown of additional provisions (prior user rights, supplemental examination, post-grant review, etc.) coming soon.
Senator Leahy (left) and Congressman Smith (left) at AIA signing.
The America Invents Act reshapes U.S. patent law in fairly profound ways with established major industries benefitting, but providing unwanted challenges for some. The final bill changes the US system to a first-inventor-to-file system. It creates several post-grant review mechanisms whereby 3rd parties can challenge another’s patent application, including the allowance of submission of prior art by 3rd parties and the creation of a new, post-grant administrative review proceeding. The financial sector will get additional tools to address long-held concerns over “business method” patents such as those at that heart of litigation involving several large banks and a company which holds patents on processes for securing checks electronically. The AIA also effectively bans the practice of patenting tax strategies. The bill also restricts the practice of plaintiffs in infringement cases joining together large groups of defendants who may have no business relation to each other.
On Friday, September 16, 2011, President Obama signed into law “The America Invents Act” (“AIA”) which passed the Senate on September 8, 2011, by a vote of 89-9. The AIA passed the House of Representatives on June 23rd by a vote of 304-117. The measure, which is the product of a seven-years-long legislative battle among patent policy stakeholders, changes how patents are obtained and enforced in the United States. Important reforms to patent law are incorporated into the AIA and, just as significantly, several controversial proposed changes were deleted from the AIA before final passage.
Starting with President Obama’s State of the Union Address in January, where he made innovation and job creation key elements of his speech and specifically embraced passage of patent reform as a means of addressing both issues, patent reform was well positioned to be enacted in 2011. Moreover, Congress was desperate for legislative accomplishments in an environment where partisan differences, a weak economy, and government fiscal concerns dominated. Longstanding pro-reform coalitions and associations continued to expend considerable resources on the bill. Passage was deemed virtually assured when the Chairmen of the Judiciary Committees – Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX) – essentially agreed this summer on a common piece of legislation. But, as explained below, nothing’s ever as simple as it seems in Washington.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. The treatise is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting.
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