On March 16, 2013, the US officially moved from a
first-to-invent to first-inventor-to-file system under the America
Invents Act (AIA). In the wake of this well-publicized transition,
new administrative requirements have been put in place and new
patent procedures are available to applicants. In order to get
ahead under the first-inventor-to-file system, new procedures for
managing your patent portfolio should be considered:
- Develop and implement a system to coordinate and
ensure timely review and filing of patent
applications. The first-inventor-to-file
structure places a premium on filing before anyone else files or
publishes. Therefore, applicants (institutions, companies or
individuals) should:
- Develop a system for early identification of inventions as well as facilitate and streamline the patent drafting and filing process (including provisional applications);
- While prompt patent filings are certainly recommended, avoid rushing too quickly to file, as this may result in applications with insufficient or narrow descriptions of the invention;
- Put in place a set of checks and balances to ensure that applications have sufficiently detailed and robust descriptions; and
- Work closely with patent counsel to make sure that they are
applying the same level of 'managed urgency' to the patent
filing process.
- Maintain transitional procedures to handle both AIA
and pre-AIA filings. Although the March 16, 2013
date has passed, all pending applications filed before this date
will still be examined according to the first-to-invent and pre-AIA
prior art rules. Continuation or divisional applications filed on
or after March 16, 2013 that claim only the subject matter
disclosed in a parent application filed on or before the deadline
will also be examined under pre-AIA rules, without being subject to
the first-inventor-to-file rule and the prior art mandated by the
AIA. Therefore, transitional procedures should be established while
the US Patent & Trademark Office (USPTO) continues to examine
patent applications under both standards. For instance,
applicants should:
- Track which pending patent applications were filed before March 16, 2013;
- Maintain pre-AIA practices and procedures for these filings in conjunction with the new procedures for AIA filings; and
- Keep these pre-AIA practices in place even after all pending
applications have been granted (as continuation and divisional
applications may still need to be filed).
- Keep new filings under pre-AIA
rules. Although the new AIA standards are now in
full effect, there are a few ways to keep some new filings under
pre-AIA rules:
- File a patent application with claims that are directed to subject matter of a provisional patent application filed before March 16, 2013;
- File a continuation or divisional application that claims only the subject matter disclosed in a parent application filed before March 16, 2013 (note: if there is even one claim that is not entitled to a pre-AIA filing date, then the entire application, and all children applications filed from this application, is assessed under AIA rules); and
- Where the option to pursue under both systems exists, review
prior art and disclosure activities relevant to the invention to
determine whether it is advantageous or necessary to remain under
pre-AIA review.
- Monitor patent applications of competitors for
potential third party prior art
submissions. Before enactment of the AIA, third
parties (i.e., non-applicants) could only submit prior art in
limited circumstances during the prosecution of a patent
application and were not allowed to submit a description with the
prior art or any other documents to the USPTO. Under the AIA
regime, third parties are now permitted to submit prior art patents
or publications for any pending patent application, regardless of
its filing date. Third-party submissions have been expanded
and must be filed before the earlier of: (1) the date of allowance,
or (2) the later of six months after the date of first pre-grant
publication or the date of a first office action rejecting any
claim. With these submissions, third parties are also required
to provide a "concise description of the asserted relevance of
each submitted document." Statements made by the patent
applicant to the USPTO or in court filings may also be included as
admissions or evidence of inconsistent positions taken by the
applicant. Submission of third-party prior art may be a useful
tool to ensure that the examiner considers all relevant prior art
before granting a patent. However, the submission of prior art does
not provide the same opportunities to discuss the prior art as
would a post-grant proceeding or litigation. Consequently,
companies should consider the following:
- Monitor the publication of competitors' patent applications; and
- Determine whether to submit relevant prior art publications and
comments so that the USPTO may consider these during patent
prosecution of these applications.
- Make sure post-grant proceedings are filed with the
USPTO within nine months of issuance. Post-grant
review is a new procedure that is most closely related to the
present inter partes review. Unlike inter
partes review, post-grant review allows the petitioner to
request invalidation of a patent claim based on any basis for
invalidity, including non-statutory subject matter (Section 101),
lack of enablement or written description support (Section 112, 1st
paragraph), and claim indefiniteness (Section 112, 2nd paragraph),
and even through the use of references other than patents or
publications. Because post-grant review provides a strategically
important, but time-limited, opportunity for third parties to
invalidate their competitors' patents, companies should
consider the following:
- Monitor the issuance of competitors' patents; and
- Determine within the time frame of the nine-month deadline from
the patent's issue or reissue date whether to file for
post-grant review of those patents.
- Modify and update record keeping procedures to
prepare for new derivation
proceedings. Derivation proceedings are a new
form of inter partes proceeding that are available for all
applications subject to the first-inventor-to-file provisions of
the AIA. Applicants seeking to prove derivation will need to
establish that an alleged "inventor" of an earlier-filed
application derived their invention from the true inventor who
later filed their patent application. Therefore, applicants
should consider the following:
- Maintain evidence of conception, reduction to practice, and records of witnesses who can corroborate such evidence; and
- Keep track of individuals who had access to the inventions prior to the patent application being filed on those inventions, as this information may be needed to show derivation.
In light of the changes that have taken place with the implementation of the AIA, innovators will want to take new steps to manage their patent portfolios as we move forward in the first-inventor-to-file system. For additional information, the USPTO has released several videos and presentations as part of its program to educate examiners and the public.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.