Implementation of the "first-to-file" provisions of
the Leahy-Smith America Invents Act (AIA) took a step forward
yesterday when the United States Patent and Trademark Office
(USPTO) published proposed rules and proposed examination
guidelines for the first-inventor-to-file provision of the AIA.
Both are open for comment until October 5, 2012. The final versions
will go into effect on March 16, 2013, and will apply to all patent
applications with an effective filing date of March 16, 2013, or
The AIA was enacted on September 16, 2011, and although signed
into on that date, numerous provisions of the AIA required
rulemaking by the USPTO before they could be effective. Prior
Morrison & Foerster client alerts on the AIA and a chart of
effective dates of the various provisions of the AIA can be found
in our Patent Reform Resource Center.
The documents published yesterday are some of the USPTO's
first steps in implementing Section 3 of the AIA, moving the United
States from a "first-to-invent" to a
"first-inventor-to-file" patent system. This shift
represents one of the most significant changes to the patent
statute in the last 50 years.
THE NEW FIRST-TO-FILE SYSTEM
The AIA transforms the U.S. from a "first to invent"
system to one where the right to a patent is given to the inventor
who is the first inventor to file. Under current law, an inventor
may challenge another's patent application through the
interference process by arguing that he or she can document a prior
invention date. Going forward, the inventor with the earliest-filed
application is now the one entitled to claim the patent over
another inventor, regardless of who invented the claimed subject
matter first. The change in the law also marks the beginning of the
end of interference practice, and serves to harmonize the
U.S.'s patent system with that of every other major
jurisdiction throughout the world.
ONE-YEAR GRACE PERIOD
The AIA provides a grace period for disclosures made by an
inventor or joint inventor within one year of the effective filing
date of a claimed invention. Thus, an inventor may file a patent
application within one year after publicly disclosing the
invention, without having the disclosure be available as prior art.
According to the guidance, the one-year grace period in the AIA is
measured from the earliest U.S. or foreign patent application to
which the patent or application is entitled to claim the benefit of
priority, whereas the one-year grace period in pre-AIA 35 U.S.C.
102(b) is measured from only the earliest application filed in the
EXPANDED PRIOR ART
The AIA expands the scope of materials considered prior art
during examination. Claims are now subject to rejection by evidence
of a prior public use or sale of the invention anywhere in the
world, rather than just in the U.S.
DEFINITIONS OF STATUTORY TERMS
The documents published yesterday also seek to clarify certain
terms in the AIA.
As we noted in our September 8, 2011 client alert, the AIA does
not define the word "disclosure." Specifically, the use
of this term in the statute was criticized as being unclear as to
whether public use or sales activities by inventors are considered
to be a disclosure for the purpose of the grace period. The
guidance published yesterday confirms that the grace period will be
largely limited to disclosures made by the inventors of an
application and will not extend to third-party disclosures.
In its proposed guidance, the USPTO states that the provision of
35 U.S.C. 102(a)(1)—stating that a claimed invention may
not be patented if it was "otherwise available to the
public"—is a "catch-all" provision that
permits USPTO examiners to rely on prior art not available under
pre-AIA 35 U.S.C. 102. Specifically, the provision allows examiners
to rely on disclosures available to the public despite the fact
that the disclosure may not constitute a "printed
publication." Examples of information "available to the
public" provided in the guidance are: a student thesis in a
university, a poster display at a scientific meeting, subject
matter in a laid-open patent application, a document on the
Internet, or a commercial transaction that does not constitute a
sale under the Uniform Commercial Code.
The proposed guidelines published yesterday are not final, and
do not have the force and effect of law. Morrison & Foerster
will continue to provide client alerts on the implementation of the
Within the next month, and no later than August 16, 2012, the
USPTO will publish its final rules regarding the numerous new
post-issuance procedures, including the post-grant review and inter
partes review procedures. We will issue a client alert when those
rules are published.
Because of the generality of this update, the information
provided herein may not be applicable in all situations and should
not be acted upon without specific legal advice based on particular
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