By Kyle Meziere
On March 16, 2013, the United States will transition from a “first to invent” patent system to a “first inventor to file” system under the Leahy-Smith America Invents Act (AIA).[i] The AIA is an effort to both reform the U.S. patent system and harmonize the U.S. system with foreign systems. Most notably, the AIA changes an underlying principle of how the U.S. patent filing system functions. It implements the basic “first to file” principle, but maintains some features that are characteristic of “first to invent” systems.
Presently, the U.S. system for identifying who has a right to a patent differs substantially from most international systems. Currently, U.S.C. §102 governs the U.S. system according to a “first to invent” principle.[ii] When two parties contest the right to a particular valid claim, the U.S. system awards the patent to the first applicant to reduce the invention to practice, either actually or constructively. Also, the system allows the inventor a one year grace period in which to file after the subject matter of a prospective patent has been publicly disclosed.
Most foreign jurisdictions utilize some variation of a “first to file” system. If two parties apply for the same valid patent claim, then the party who files for a patent first has the superior right.
The European Patent Convention (EPC) is one example of a “first to file” based patent regime. [iii] In general, the first person to file for a patent within the EPC system has a right superior to all others to the claim. Another characteristic of the EPC is its strict public disclosure rule. The European system bars patenting subject matter that has been publicly disclosed. Exceptions exist only for disclosures made as a result of an abuse of a special relationship with the applicant or for disclosures made at specific international conventions. As a result, under the EPC there are a lot more scenarios where nobody has a valid claim.
Other foreign jurisdictions use a “first to file” system that incorporates a broader grace period for inventors to file after subject matter has become publicly available. The Japanese patent system offers a six month filing grace period to inventors who publish an article on their work, or who present at an approved exhibition or academic meeting. [iv] The six month grace period is also available for inventors whose material is made public against their will.
The AIA system combines elements characteristic of “first to file” systems with elements typical of “first to invent” systems. Like the EPC, the AIA will generally grant the patent to the first party who files. Like the current U.S. system, it allows a broad one year grace period for public disclosures made by the applicant. The AIA synthesizes particular “file to file” and “first to invent” characteristics, resulting in a system closer the international norm.
Although the AIA results in greater harmony amongst the world’s patenting systems, there will still be some dissidence. The differences between the EPC strict novelty standard and the exceptions to the novelty requirement in the AIA could potentially cause the AIA system to function starkly different than the EPC system.[v] For example, an inventor who independently invents second and files second could win the patent. This would result if he publishes before the first inventor files or publishes. Typically, this result could not occur under either the current U.S. or European systems. Ostensibly, it could occur under the Japanese system due to its broader scope of exceptions to what qualifies as prior art. Also worth noting is that the EPC does not distinguish between disclosures made by the applicant and ones made by a third party. The AIA, like the Japanese system, allows mostly only disclosures made by the applicant to qualify for the grace period.
The drafters of the AIA desired to both harmonize the U.S. system with foreign systems and improve its functionality and efficiency.[vi] The legislature endeavored to accomplish this by taking the best elements of the “first to invent” and “first to file” systems and combining them.[vii] The legislator utilized what they deemed to be the best elements of each filing system while managing to move the U.S. system closer to an international norm. The largest remaining difference, which could seriously affect how the different systems behave, is the length and scope of the respective grace periods.
[i] Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-29, 125 Stat. 285 (amendment effective 18 months after enactment date).
[ii]35 U.S.C.S §102 (2010), amended by Pub. L. No. 112-29, 125 Stat. 285 (2011).
[iii] European Patent Convention art. 55, Oct. 5, 1973, 1065 U.N.T.S. 254 as revised Dec. 13, 2007, available at http://www.epo.org/law-practice/legal-texts/html/epc/1973/e/contents.html.
[iv] Tokkyo Ho [Japanese Patent Law], Law No. 121 of 1959, arts. 29-30 (Japan).
[v] Brad Pedersen and Justin Woo, The Matrix for Changing First-to-Invent: an Experimental Investigation into Proposed Changes in U.S. Patent Law, 1 Cybaris An Intell. Prop. L. Rev. 1, 5 (2010).
[vi] H.R. Rep. No. 112-98, pt. 1, at 39-40 (2011).
[vii] Id. at 42.