Section 3 of the America Invents Act moves the United States from a first-to-invent system to a first-inventor-to-file system. While the applicant must still be an inventor of the claimed invention, it is no longer required that the inventor be the first true inventor, but rather only the first inventor to file or publicly disclose the invention. No longer will the date of invention/conception be the key date in determining patentability. The purpose of the change is to place the U.S. in harmony with other developed countries, which utilize some form of the first-to-file system, while ensuring the individual who obtains a patent is a true inventor.
The new provisions allow for an inventor to obtain a patent unless, before the effective filing date of the claimed invention, the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public. Unlike the first-to-invent system, prior public use or sale can occur in any country, not just the United States. Subject to the exceptions discussed below, no patent will be granted to an inventor who files a patent application after another inventor has filed an application, even if the second filer invented the claimed invention before the first filer. The America Invents Act has put a procedure in place (derivation proceeding) to ensure the individual obtaining the patent is a true inventor of the claimed invention and did not derive the invention from another.
There are two exceptions to the first-inventor-to-file system. First, a public disclosure will not bar patentability if, within one year of the effective filing date of the application, the disclosure was made by the inventor or another who obtained the disclosed subject matter from the inventor. Second, another party’s public disclosure before the effective filing date of the application will not bar patentability if, before the disclosure, the disclosed subject matter was made public by the inventor or another who obtained the subject matter from the inventor. Essentially, these exceptions allow the inventor, by being the first to publicly disclose the invention, to bar all others from obtaining a patent. This public disclosure will not jeopardize the inventor’s/discloser’s rights as long as an application is filed within one year of the disclosure.
The two exceptions lead some to say the first-inventor-to-file system created by the America Invents Act is actually a first-inventor-to-file-or-publicly-disclose system. While a public disclosure will protect the rights of the inventor in the United States, it likely will bar the granting of a patent in foreign countries that require absolute novelty.
As before, a patent will not be granted on a claimed invention if the differences between the claimed invention and the prior art are such that the claimed invention would have been obvious before or at the time of the effective filing date to a person of ordinary skill in the art.
Upcoming Events/Key Dates
The U.S. moves to the first-inventor-to-file system on March 16, 2013. First-inventor-to-file applies to all applications having an effective filing date on or after that date. It also applies to all claims in an application with one or more claims having an effective filing date on or after March 16, 2013. Applications without a claim having an effective filing date on or after March 16, 2013, will be examined under the current first-to-invent system. The USPTO published proposed rules regarding this provision on July 26, 2012.