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.
All member countries of the Paris Convention and the PCT approve the novelty of an invention claimed in the patent application going back to the priority date in the origin country. Therefore, as to the novelty of a claimed invention, all member countries treat foreign and domestic patent applications equally. Still, the member countries’ treatment of the “grace period” poses a serious issue: no patent law in any country recognizes the grace period as starting from the priority date, but only from the domestic filing date.
Thus, if a U.S. inventor publishes his invention, files a U.S. patent application within one year, and files a Japanese patent application within one year from the U.S. filing date claiming priority, he will get a U.S. patent but not a Japanese patent. This is so because the Japanese Patent Law allows a six-month grace period from the Japanese filing date, not U.S. priority date. This six-month grace period is same in the rest of world except for the United States and Korea.
The AIA broke this barrier by giving both the novelty and the grace period on an effective filing date which goes back to the original filing date, so long as there is priority claim to the original foreign application date. Thus, under AIA, both U.S. and foreign applications are completely equal with respect to both novelty and grace period.
This is extremely unusual, since no other country provides a grace period commencing from the priority date. In this respect, the AIA is the first and sole universally equal patent law in the world.
The America Invents Act (AIA) has now gone through its second phase of implementation. Initially there were few things that went into effect over the initial 90 days after President Obama signed the legislation into law. The first major wave of the AIA took effect on September 16, 2012. See, for example, Citation of Prior Art, Supplemental Examination, Oath/Declaration and Post-Grant Review et al.The most significant of the changes to U.S. patent law, namely the shift from first to invent to first to file, will not take place until March 16, 2013. This is a monumental change to U.S. patent law so it is never too early to discuss the many issues that will present with this shift.
The first and most obvious place to begin any discussion of the shift to first to file is with a very basic question: What is prior art? This is anything but an easy, straight forward question even under first to invent laws that we know so well and have been familiar with virtually throughout the entire history of the United States. The complexity in what seems an otherwise simple question stems from the fact that prior art is defined by statute. There is no common sense way to conceptualize what is, or what is not, prior art.
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.
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.
On and after March 13, 2013, any patent application filed is subject to new 102 (and new 103) unless it fits within an exception defined by the transition provisions of the AIA. Therefore, imagine the following possibility: a continuation is filed on or after March 13, 2013, but because of the manner in which it is handled, it does not fit within the exception. Now, new section 102 (and new 103) applies to the patent application. What consequences might follow from such an occurrence?
This situation, which I describe in more detail below, has the potential to affect anyone prosecuting an application originally filed under current law, who files a continuation under the AIA to continue prosecution. Therefore, most patent prosecutors can expect to be affected and may wish to consider more carefully how best to proceed in such situations. To comprehend the issue takes some elaboration because the situation is complex, unfortunately. Several different legal threads, in effect, may come together to seemingly conspire against an unwary or unsuspecting patent prosecutor.
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.
By now virtually everyone in the patent and innovation communities knows that on September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act. This is an enormous change to U.S. patent laws, likely the largest change in U.S. patent law since at least 1790. The last major re-write was in 1952, and that wasn’t a re-write so much as a codification of case law that had developed over the previous decades. This is a major change and one that must be thoroughly and completely respected in terms of breadth and depth.
A lot of arguing has been going on here on IPWatchdog.com about certain portions of the so-called first to file provisions contained in the Act. Truthfully, the new 102(b)(1)(B) is not written as clear as it probably could be, but I have steadfastly maintained that it provides only a personal grace-period, nothing more. Many have criticized me at great lengths, and some have even told me via private e-mail they have stopped reading IPWatchdog because I am dead wrong. I have even had a variety of entertaining discussions with Staffers on the Hill and a variety of senior attorneys and high ranking corporate counsel. Notwithstanding those who vehemently disagree with me, with every new statement made by the United States Patent and Trademark Office my position seems to be further confirmed.
The grace-period provided to inventors is only a personal grace-period and subsequent disclosure that is not derived from the inventor will create a statutory bar to patentability. My source? The United States Patent and Trademark Office.
As nearly everyone in the United States “Patent World” is likely aware of by now, on Friday, September 16, 2011, President Obama signed the patent reform legislation recently passed by Congress. The law, therefore, is legally in force, although different provisions have different effective dates. The overall bill is, of course, extremely complex and has many different of facets.
This post is focused on specific aspects of “new 102,” which legally has an effective date of March 16, 2013. Even with limiting the topic of this post to new 102, enough complexity is presented that it would not be possible to discuss in any meaningful way all the changes with which one should be familiar. In other words, there are many potential traps for the unwary; however, the two discussed below seem to me to be particularly pernicious.
Last night patent reform was big enough news to make the FOX News 6pm news hour, but frankly there wasn’t much “news” to report from activities in the Senate yesterday. Senator Leahy initiated discussion on S. 23, the Senate version of patent reform, and a brief discussion ensued. More is expected today on patent reform in the Senate.
It appears as if the time has finally arrived for an up or down vote on patent reform in the United States Senate. It has been widely reported that the full Senate will take up patent reform upon returning from recess this week, and it is now believed by many on the inside that the Senate will take up patent reform on Monday, February 28, 2011, the first day back. Some are even anticipating that the Senate will vote on patent reform bill S. 23 late in the day on Monday, February 28, 2011. See Crunch Time: Call Your Senators on Patent Reform. That would seem exceptionally quick, particularly given the rancorous issues and Amendments still to be presented, but nothing will surprise me.
As we get closer to a vote in the Senate the rhetoric of those for and against patent reform is heating up to a fever pitch. The big fight, once again, is over first to file, with battle lines drawn that run extremely deep. Senator Diane Feinstein (D-CA) is expected to file an Amendment stripping the first to file provisions, which could be supported by Senate Majority Leader Harry Reid (D-NV).
Francis Gurry, WIPO Director General at BIO Convention
Yesterday I had the honor of spending 30 minutes interviewing Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO). The interview was conducted on the record and at the BIO International Convention being held in Chicago, this week. My interview with the Director General took place at 11:00am, prior to his panel session with USPTO Director David Kappos at 2:00pm.
The Director General spoke substantively about issues facing the Patent Offices of the world, as well as some possible solutions. Gurry also discusses harmonization attempts, work-sharing agreements and the crushing worldwide backlog of patent applications that could lead to irrelevance of the system. As you read the interview you will also see that he thinks it is possible that the rest of the world will adopt a US-like grace period, which echos Kappos’ recent push to not only get US patent reform enacted but to harmonize laws, but to push the rest of the world toward a uniform grace period. Gurry also indulged me in a bit of speculation regarding software and the worldwide disagreement on whether software should be considered patentable subject matter.
Gurry was quite engaged and gracious. He is extraordinarily well informed and conversant with the issues and processes on both a macro and micro level, as well as the political realities associated with harmonization and other issues that have for decades dogged the international intellectual property community. We could have easily talked for hours on all sorts of issues, and I hope to have the opportunity to go back on the record with him in the future.
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