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Defining Prior Art - First to File System - Proposed Change to Law

September 16, 2011: The changes to U.S. Patent law, which will become law in due course, will make U.S. Patent law similar to Canadian patent law - a prior disclosure by the inventor, up to one year before filing, will still entitle you to a patent in the United States. However, a prior disclosure by another, even a day before your filing date, will preclude you from a patent, even if you are the first inventor. In a blog by David Kappos, current head of the U.S. Patent Office, he alludes to a solution - immediete filing of a provisional patent application. While this firm has long recommended filing only non-provisional patent applications, once the law changes, it will be wise to file a provisional application as soon as possible to ensure the earliest possible filing date, and then follow up with a non-provisional in due course.

The following article, providing more details, is a repost of an article which appears at http://www.patentlyo.com/patent/2011/09/guest-post-defining-prior-art-under-the-leahy-smith-aia.html, written by Howard Skaist and Ted Kerr.

35 USC 102 is the statutory section that, in effect, legally defines 'prior art.' 'Prior art' is, of course, a key consideration affecting whether to file for a patent, whether a patent will ultimately be secured, and whether, if issued, the patent will be legally enforceable. Furthermore, if patent protection is ultimately sought, 'prior art' will affect how best to draft the patent claims so that all of these are more likely to be accomplished successfully.

Understanding the ins and outs of what constitutes 'prior art 'is largely the domain of the patent attorney. One might expect this term to have a common sense understanding; the reality is that it is far from common sense.

Changes that the Leahy Smith Act makes to what is considered 'prior art' will have far reaching implications. With this in mind, the following is intended as a short list of changes so that the patent practitioner is alerted to potential impact(s) on his or her practice.

Rather than totally rewrite section 102, Congress has retained some features that are well-understood under current law.

  • "Invention" has been changed to "claimed invention," now defined in section 100. The new statute also refers to "the effective filing date" of the claimed invention, now defined in section 100. Also, "inventor" and "joint inventor" are now defined terms in section 100.
  • The "claimed invention" is not novel if "patented," "described in a printed publication," "in public use," or "on sale." Therefore, for these events there is no grace period under the new statute €“ current law has a one year grace period.
  • "On sale" and "in public use" activities are no longer limited to the United States €“ current law requires these events to be "in this country."
  • If the claimed invention was "otherwise available to the public" before its effective filing date, it is not novel. However, "disclosures made one year or less before the effective filing date" appear to be intended as an exception. In summary, if one of these disclosures is made by an inventor or joint inventor or "another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor"(called "another" below), the disclosure will not be considered 'prior art.' Also, the disclosure will not be considered 'prior art,' if before it, the subject matter was publicly disclosed by an inventor, joint inventor, or "another."
  • Section 102(e) type prior art is now codified as section 102(a)(2), but with different language €“ for example, "by another" has been changed to "names another inventor." A new subsection (d) defines the date at which "subject matter described" becomes 'prior art.' An exception, however, is referred to as "disclosures appearing in applications and patents." In summary, if the subject matter of one of these disclosures was obtained directly or indirectly from an inventor or joint inventor, then it will not be considered to be 'prior art.' Also, the disclosure will not be considered 'prior art,' if before the effective filing date of the patent or application, the subject matter was publicly disclosed by an inventor, joint inventor, or "another." Finally, if the subject matter disclosed and the claimed invention are owned by the same person (or subject to an obligation to assign to the same person), then the disclosure will not be considered 'prior art.'
  • Current subsections (c), (d), and (g) no longer exist. Subsection (g) is what, in effect, made the United States a first to invent system. Therefore, removing it makes the United States, in effect, a first to file system.
  • The bill is yet to be signed. However, the changes to section 102 (and section 100) go into effect 18 months after enactment, which would be the date the President signs the bill.

Howard Skaist is the founder of Berkeley Law & Technology Group, LLP (BLTG), an intellectual property law firm based in Oregon and, before that, he was the Director of Patents for Intel Corp. Ted Karr P.C. is a BLTG partner and Ted was responsible for patent licensing at Intel Corp. before joining BLTG.

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