Posts Tagged: "first to file"

I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A where you have an idea or invention to point B where you dreams of commercial success are coming true, but with every choice there are associated risks. Unfortunately, many inventors still have not received the message about the importance of filing a patent application as quickly as possible. I know this to be true because every week I am contacted by inventors who either have already started selling or using their invention, or who are within a few days or weeks of the same. With the United States being a first to file system, a change that became effective March 16 ,2013, this can be a fatal mistake.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that it will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA). The forum marks the first anniversary of the implementation of FITF, and will be held on March 17, 2014, at the USPTO headquarters in Alexandria, Virginia. Deputy Under Secretary of Commerce for Intellectual Property and USPTO Deputy Director Michelle Lee, along with experts from the offices of the Deputy Commissioner for Patent Examination Policy and the Deputy Commissioner for Patent Operations, will participate in the event.

Social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations. Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason. If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.

Let’s take a step back and consider the nuance of the so-called grace period that remains under the AIA. Under the new law we know that in some cases an inventor who publishes information about his or her invention will not be prevented from obtaining a patent if someone obtained or derived a subsequent disclosure from the inventor. The USPTO has told us that the second party, the deriving party, does not have to publish something that is verbatim in order for the true first inventor to be able to prove that the second party is a deriving party. In other words, the USPTO is telling us what the second party does not have to do in order for the first, disclosing inventor to claim entitlement to the grace-period. Unfortunately, stating something in the negative is not particularly illuminating as any patent practitioner can tell you. Saying something is “non-planar” is useful information but it doesn’t exactly tell you what that something is, instead it only removes one of an endless number of possibilities.

Consider the following: On Friday, March 15, 2013, an applicant could file a U.S. patent application covering an invention that was the subject of a publication provided the publication was dated less than 1 year earlier. This was true even if the publication was by another individual or entity that independently arrived at the invention on his or her own. Effective Saturday, March 16, 2013, if another individual or entity independently arrived at the invention and published an article before the first inventor filed the first inventor who filed will be unable to obtain a patent unless the subsequent disclosure was nearly identical to the first disclosure.

Considered by many as the most comprehensive revision to the United States patent system in over 50 years, the America Invents Act (“AIA”) represents progressive legislative reform intended to align U.S. patent policy with global precepts, i.e., systems which reward the “first-to-file” a patent application. Many AIA provisions modify or completely change the former first-to-invent (“pre-AIA”) U.S. patent system, with the most immediate and conspicuous AIA component?the establishment of a filing-based regime as of March 16, 2013?serving as the hallmark and mark of U.S. patent reform.

Nonetheless, having only enjoyed 3-months of the AIA in its entirety, it is still too early to appreciate the de facto impact of this nascent legislation. The AIA has nevertheless ushered in transitional strictures that have uniquely placed research institutions in an ostensible patent?policy “reformation” with respect to technology evaluation and knowledge translation. While the pervasive nature of this new patent regime imparts an array of university-based concerns, the following Top 5 considerations are intended to reengage university professionals and employees with patent reform concepts and concerns during the initial “aftermath” of the AIA.

Just as most of society wrongly considers doctors as “gods”, many patent clients wrongly think that patent attorneys will help them achieve these business objectives simply by filing a patent. To be fair, patent attorneys are not being hired to study the client’s market, nor their competitive position within the market. They are not hired to develop the client’s internal IP budget, nor to help the company strategically develop an IP portfolio that could boost exit value. Such an engagement could be fraught with conflicts and confusion. Unless attorneys make clear the limited and narrow scope of their services, and unless and until clients become more IP-savvy, clients will continue to incorrectly assume that all is fine in their Patent La-La Land; nothing is further from the truth.

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 repatenting 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 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.

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 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 issues that arises.  We then transition into discussing first-to-file and the American Invents Act.

Section 42.405(c) provides that a derivation is not sufficiently shown unless it is supported by substantial evidence. This includes at least one affidavit addressing communication and lack of authorization. Further, the showing of
communication must be corroborated. One open practical question is whether derivation proceedings will be at all useful. How will the inventor alleging derivation be in possession of sufficient evidence to demonstrate communication and lack of authorization? The best evidence of each will be in the hands of the party who is the alleged deriver, not the inventor claiming to be the source of the invention. Moreover, proving a negative (i.e., lack of authorization) may be challenging, as proving a negative can always be.