Not quite first to file

On September 16, 2011, large changes were made to many areas of patent law in the America Invents Act (the “reform act”).  In this post, we discuss the changes that bring America closer to a first to file regime, as found in the rest of the world. In this post, § is used to refer to 35 USC as amended by the reform act, while “sec.” refers to sections of the act.  Many sections effectively codify themselves by amending 35 USC, but others are uncodified.

Publications up to the filing date become prior art.  The precise language is “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.”  § 102(a)(1) (amended by sec. 3).  This brief list encompasses the old § 102(a), § 102(b), and § 102(d) categories of prior art, although the triggering dates all become application filing rather than the date of invention (old § 102(a)) or one year before the date of filing (old § 102(b) and § 102(d)).

It is not clear what the “otherwise available” clause in § 102(a)(1) is meant to encompass.  Perhaps the goal is to capture oral presentations at conferences and the like.  Given the breadth with which the Federal Circuit has construed “printed publication” in cases like In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), it is not clear why there is a need for this provision.

The former § 102(e) prior art category – patent applications having an earlier filing date – is carried forward in § 102(b)(2).

There is a one-year grace period for disclosures deriving from the inventors in § 102(b)(1)(A) and (2)(A).  This is similar to the Japanese six-month grace period in that any disclosure coming from the inventor within that time period is eliminated as prior art; there is no restriction on how the disclosure is made.

Under § 102(b)(1)(B), there is a further provision which makes the new American system only a pseudo “first to file.”  While the current swearing back practice is abolished, a patentee may swear behind a reference less than one year prior to the filing date by establishing that “the subject matter disclosed [in the disclosure serving as prior art] 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.”  There is similar language in § 102(b)(2)(B) allowing prior patent filings to be sworn behind.  This is the great mystery provision of the patent reform act, raising numerous doubts.

The bracketed comment I have added to the statutory text seems to me grammatically correct based on the structure of the text, but I am not sure the courts will so understand it; that would be a rather narrowing construction.  Suppose for example that the claim is to a genus G, and the invalidating prior art reference discloses a species S Í G.  Does the disclosure coming from the patentee have to be of the selfsame species S to effect a swearing back?  Could the disclosure coming from the patentee be of a different species S’ Í G?  Does the disclosure coming from the patentee have to enable and provide written description for the entire claimed genus G, as a patent application does?

A different point of doubt is how limited or transient the public nature of the patentee’s disclosure for § 102(b)(1)(B).  Could a disclosure to a small mailing list suffice?  How about a disclosure that is up on a website for five minutes?  One that is encrypted but has an easy-to-crack password?  May it be an oral presentation at a conference?  An oral presentation to any audience not under a non-disclosure agreement?  To an inventor’s spouse or other relative?  If oral disclosures are allowed, is any kind of corroboration needed, as with current swearing back?

Sections 102(b)(1)(A) and 102(b)(2)(A) lessened the conformance to international practice which would have been achieved in their absence.

There remain, after the reform act, some vestiges of the old first-to-invent system.

To begin with, the first-to-file portions of the reform act apply only to applications which have at least one claim whose effective priority date is at least eighteen months after the date of enactment.  Sec. 3(n)(1).  Thus, the current first-to-invent regime remains fully in force until March 16, 2013.

In addition, applicants who have a claim to a priority date prior to March 16, 2013 continue to be subject to important aspects of the old regime.  Sec. 3(n)(2).  Those who have no claims with post-March 16, 2013 priority date are in the full prior regime.  Even  for those who add such post-March 16, 2013 claims, earlier inventors can still challenge their applications under old § 102(g) and § 291.  Given the American love of divisionals, continuations, and CIPs, it can be expected that there will be for a couple of decades some number of pending applications having such pre-March 16, 2013 priority dates and thus still subject to first-to-invent.

In the American system, the inventors or their successors in interest are and remain the only persons entitled to a patent.  Cf. EPC art. 60(1) (“The right to a European patent shall belong to the inventor or his successor in title.”).  However, an entity may wrongly apply for a patent without naming all the inventors because it does not have assignments from all of them – for example, because one of the inventors was an independent contractor and the contract unwisely omitted to require the assignment of inventions, or because the invention arose from a joint venture and the joint venture agreement did not provide for suitable assignments.  The entity may even apply for a patent naming only false inventors and none of the true inventors, in effect “stealing” the invention.  The normal way that this type of abuse is dealt with in American law is that inventorship is corrected through a civil action under § 256.  Once inventorship is corrected, the ownership of the patent becomes shared or, in the extreme case where no true inventor was named, passes to the true inventors.

The drafters of the reform act apparently did not feel that this procedure provided sufficient guarantees against entities seeking to patent someone else’s invention, so they provided a derivation proceeding in the PTO.  If you see a published application that contains a claim which you think the applicant “derived” from you (the true inventor), you can add an identical or closely similar claim to an application of your own and challenge the other applicant.  § 135 (referring to “an invention that is the same or substantially the same”).  There is a one-year deadline from the first publication of the derived claim for you to make this challenge.  This provides a kind of counterpart to former § 102(f), but it is unfortunately not clear just what you have to prove to establish derivation.  There must presumably be a communication of the invention from you to the applicant who made the claim, cf. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1576-77 (Fed. Cir. 1997) (construing old § 102(f)), but it is not clear what relationship is required between that communication and that applicant’s claim.  Must the communication be a full enabling disclosure for the claim, or is it enough if that communication renders that claim obvious, perhaps in combination with other prior art?

As a final vestige, there is a provision for entities that “commercially used” an invention early enough and then found that another entity patented the invention.  § 273.  Early enough means a year before the patent’s filing date or date of the disclosure under § 102(b)(1)(B).  Such entities which commercialized early get prior user rights to continue using the invention.  Of course, commercialization will often meet the requirements of the new § 102(a), for example if it consists of putting the invention in public use or on sale.  In such cases, commercialization would invalidate the patent at issue and the prior user rights would be unnecessary.

Flavio M. Rose, Irell & Manella LLP

All images and illustrations used in our posts are licensed and have been legally acquired through official sources such as Adobe Stock