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Patently Speaking, The U.S. Joins the World
Welcome to the new era in U.S. patent law. Beginning March 16, the United States went to a "first-inventor-to file" patent system, a major change from the "first-to-invent" system that has existed ever since the nation's patent laws were enacted in 1790. Patent lawyers had been advising their clients, "Beware the Ides of March," but it's too late for some of them now.
"It's a big paradigm shift," says Erika Arner, chair of the patent prosecution practice at Finnegan, Henderson, Farabow, Garrett & Dunner.
The first-to-invent principle, which had ruled the patent system since the first U.S. Patent Act was established in accordance with the U.S. Constitution, was designed to award a patent to the first person to invent a claimed inventioneven if a later inventor had beaten the first inventor to the patent office. Under the new patent system, however, a patent will be awarded to the first inventor to file, regardless of whether someone else came up with the invention first.
The change, made as part of the 2011 America Invents Act after decades of debate, is intended to simplify and streamline the complex U.S. patent system, which has invited increased litigation in recent years. It makes the U.S. system consistent with patent processes throughout the world. The U.S. was one of the only countries that still used a first-to-invent system.
But change breeds uncertainty. Many attorneys believe the new system may make obtaining a patent more difficult. The definition of what constitutes prior arta key factor for determining patentabilityhas broadened, for example. And a one-year grace period to file a patent that inventors could take advantage of under the old system has all but disappeared. In addition, attorneys say that under the new system a patent may be at greater risk of being invalidated.
"There are still a lot of unanswered questions that ultimately may be decided in court," said Patrick Waller, a partner at Wolf Greenfield who counsels clients in patent prosecution.
The last day the Patent and Trademark Office considered a filed patent application under the old law was March 15 (a day Shakespeare fans know well as the Ides of March), and patent lawyers say they were putting in extra hours with clients. They were encouraging potential patentees to review their inventions and decide whether they were ready for patenting.
Why the rush? Some of the fundamental rules of the patent game have changed. For example, a big factor in determining patentability is prior arthistorically composed of prior patents or publications. But the definition of prior art has now broadened, potentially creating a more difficult standard for patentability.
Under the old system, prior art included information that is "known or used by others" before an invention is conceived. Now, prior art includes any information that is "available to the public" before the filing date. In addition, prior art under the old system included public uses or sales that have occurred within the United States. As of March 16, however, they include uses or sales that have occurred anywhere in the world, Cooper says.
Finally, prior U.S. patents and published applications that under the old system constituted prior art as of the earliest filing date within the U.S. now, under the new system, constitute prior art as of the earliest filing date anywhere in the world. And whereas international applications have in the past only been deemed prior art if they are published in English, under the new law they are considered prior art regardless of their language of publication. "Geographic restrictions for prior art are being removed, so there will be more ways to challenge a patent," Arner says.
Prior art isn't the only change creating patent anxiety, though. Before the new system came into effect, inventors could have availed themselves of a grace period that gave them up to one year to file a patent application on an invention, even after someone else published or sold the invention. Under the new system, the one-year grace period only protects an inventor from disclosures made by the inventor or by someone who obtained the disclosed subject matter from the inventor.
Another major worry is the new postgrant review process. The new law says that within nine months of issuance, patents granted under the first-inventor-to-file system can be challenged by anyone on any grounds that would be available before a federal court. The challenge will be heard by the PTO's Patent Trial and Appeal Board, whose judges generally have technical expertise. Attorneys anticipate that this postgrant review process, which would be less costly than federal court litigation, could become a popular and effective way to challenge patents.
"We won't see the effect of this change for at least one or two years, because it generally takes that long for a patent to issue," says Matt Kreeger, a patent attorney and partner at Morrison & Foerster in San Francisco. "But there will be more opportunities to challenge patents with postgrant review in place."
Despite the uneasiness, the first-inventor-to-file changes will not be quite as dramatic for large companies as some GCs fear, attorneys say. "If they have international interests, they already operate in a world of first-to-file to ensure protection," says Waller. "It's the smaller inventors who aren't patent-savvy or who don't have the money for lawyers and patent filings who could wind up losers in the new system."
Independent inventors can, however, avail themselves of the PTO's new micro-entity discount (75 percent) for a patent application if the applicant meets specified criteria.
The fallout from changes taking place with the full implementation of the America Invents Act remains to be seen. Attorneys expect that the new law will raise questions that will need to be resolved through litigation.
But in the meantime, the major change brought on by the new law is the need for attorneys to educate their clients, attorneys say. "Companies will have to put more pressure on their inventors to file sooner," Arner says. "They have to understand that the invention date is no longer part of the applicationthat it no longer matters."