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It’s a First-to-File System: How Does that Impact My Practice?

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11.17.2011 | Legal Update

Perhaps none of the provisions of the recently enacted Leahy-Smith America Invents Act (AIA) will have a more significant impact on the day-to-day patent practice in the United States than the switch from the current “first-to-invent” system to a “first-to-file” system.  Indeed, the AIA substantially redefines the scope of prior art and establishes a “First-Inventor-to-File” (FITF) system. Though more akin to foreign “first-to-file” systems, the FITF system includes substantial differences that are highlighted throughout the remainder of this article to institute new best practices that address this legislation.

The race to the U.S. Patent and Trademark Office (PTO) begins in earnest on March 16, 2013.  As of that date, current sections 102 and 103 of the patent statute will be replaced with provisions of the AIA that focus on an application’s effective filing date in the determination of whether art that existed prior to that filing date bars the patentability of the claimed invention. Whereas applicants can currently “swear behind” a reference (under certain circumstances) to eliminate its effect as prior art, or establish prior invention in an interference proceeding, the determination of novelty and non-obviousness under the FITF system will no longer be based on the date of invention (e.g., conception and reduction to practice). Rather, an applicant will be entitled to a patent unless “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” (Emphasis added.) It is worth noting that the definition of invalidating prior art has therefore expanded to include the sale or public use of the claimed invention even outside of the United States. Further, an applicant will be entitled to a patent unless “the claimed invention was described in a patent . . . or in an application for patent . . . in which the patent or application . . . names another inventor and was effectively filed before the effective filing date of the claimed invention.” In sum, the first inventor to file a patent application—with limited exceptions—will be entitled to a patent on that invention even if that inventor was not the first to invent the claimed subject matter.

Notably, unlike many foreign countries, the United States’ FITF system includes a one-year grace period for public disclosures made by an inventor or another who receives information regarding the invention from the inventor. Indeed, an early public disclosure by the inventor can prevent a later disclosure or application of another from barring the patentability of the inventor’s subsequent application directed to the earlier-disclosed subject matter and filed within the grace period. Similarly, an early public disclosure by one inventor can preempt another from obtaining a “monopoly” in the United States on the disclosed subject matter, even if the subject matter was invented (but not published or filed) prior to the disclosure.

While some commentators suggest that the FITF system of the AIA promotes an aggressive, pre-filing defensive publication strategy to block potential competitors, such a pre-filing publication can serve as invalidating prior art in foreign jurisdictions that require absolute novelty. Accordingly, before inventors decide to publish any potentially patentable inventions, inventors and assignees should consult with patent counsel regarding the ramifications of such a disclosure on their U.S. and foreign patent rights. If such protection is desired, U.S. inventors and assignees should at least file U.S. provisional applications prior to any public disclosure. Filing provisional patent applications prior to making any public disclosures can protect the applicant’s rights both domestically and abroad while still allowing for later, fast publication to get the applicant’s art on record against its competitors. Importantly, inventors and assignees should consider instituting new procedures to efficiently disclose potentially patentable subject matter to their patent counsel, and work quickly to draft and file applications on the subject matter (whether to be publicly disclosed or not prior to filing the application).

In a related aspect, the AIA also creates a new “derivation proceeding” which supplants the current interference proceedings, which is part of the expiring “first-to-invent” system. In a derivation proceeding, a party can challenge an earlier-filed application or a patent resulting from an earlier-filed application if the applicant of the earlier-filed application “derived” the invention from the challenging party.  In the case of an allegedly derived issued patent, a civil action must be filed within one year of the issue date of that patent. In the case of a derived patent application, the derivation proceeding can be instituted at the PTO by petitioning the Director within one year of the “first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.” 35 U.S.C. § 135 (emphasis added). Though an earlier invention date will not allow an applicant to swear behind a prior art reference during prosecution under the new FITF regime, recording procedures (e.g., laboratory notebooks) nonetheless remain critical in defending against or asserting claims in a derivation proceeding.

This advisory was prepared by Nutter’s Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.


This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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