Mitchell S. Bigel, partner, Myers Bigel Sibley & Sajovec P.A.
The America Invents Act (AIA), which was signed into law on September 16, 2011, will convert the U.S. patent system from a "first-to-invent" system to a "first-to-file" system on March 16, 2013. Although the conversion itself brings with it important process changes for patent filers, other changes to the U.S. patent system that will be made under the AIA are of greater concern, as they will punish American innovators and, by default, our innovation marketplace.
Under the current first-to-invent system, if two people filed patent applications on the same invention at about the same time, a contest would be held to see who actually invented the technology first. However, under the AIA, the first to file in the U.S. Patent Office will get the patent, and there will be no contest as to who actually invented the technology first.
The conversion to the first-to-file system itself will not have a significant impact because of the simple fact that two people file on the same invention at about the same time far less often than you would imagine. In fact, U.S. Patent Office statistics show that this only happens to about one-hundredth of one percent (0.01%) of all patent applications. In the rare case that this does happen, the first filer usually wins anyway, because the later filer will not have enough evidence to prove he was the first one to invent. Finally, the rest of the world already has a first-to-file system, so that any sophisticated innovator who files for patents outside the U.S. already operates under these rules.
Of grave concern, however, are other changes in the AIA that will weaken the American patent system. These other changes will greatly expand what is considered the "state of the art" (what patent lawyers call the "prior art"), resulting in many more things being considered part of the state of the art against which an invention is judged.
To understand the impact of this change, it’s important to understand the concept of state of the art. Regardless of the standard of inventiveness that is applied for getting a patent (for example, a very low standard or a very high standard), an invention needs to be measured against some pool of knowledge or state of the art. What is included in the state of the art? Clearly, only things that happened before a patent application was filed could be considered part of the state of the art. But not everything that happened before would be considered as part of the state of the art. For example, technology that was kept secret by someone else would not be considered as part of the state of the art.
Unfortunately, the AIA will make three changes to place more things into the state of the art than before. For example, under our current system, if your invention (or something similar to it) was on sale in the U.S. before you filed, it became part of the state of the art. However, if something was on sale outside the U.S., it would not be considered part of the state of the art for a U.S. patent application. Now, under AIA, a sale anywhere in the world before your filing date will constitute part of the state of the art.
In a second example, assume that one day before you file a patent application another person publishes a technical paper describing technology that is identical or similar to yours. This is not a first-to-file situation, because the other person did not file for a patent. They only published a technical paper, so you are the first and only person to file. Under our current system, you can show that you invented before the technical paper was published, but under the AIA you will not be able to show that you invented earlier, even when there is no first-to-file situation. Therefore, the technical paper published the day before you filed a patent application will become part of the state of the art, even though you are not in a first-to-file situation.
A third example is more subtle, but very important. Assume someone else files a U.S. patent application on January 1, and it is published or granted on December 1 of that same year. When is this published patent available as part of the state of the art against your patent application? Logic would tell you December 1, because that is when the patent application became public. But you would be wrong. For various reasons, under our current system, it becomes effective against you the date it was filed in the U.S., January 1. Now change the situation a little. Assume this U.S. patent application was filed by, for example, a Japanese inventor who filed a patent application in Japan before January 1, and then converted it into the U.S. patent application on January 1 under international treaties. Currently, the date this patent could be used in the state of the art would be the U.S. filing date of January 1. But under the AIA, it will be available as part of the state of the art as of the earlier Japanese filing date. So, effectively, it can be used against all filed U.S. applications as of the earlier Japanese filing date, which can be up to one year before the U.S. filing date. Now consider the converse of this situation. A U.S. inventor files in the U.S., and then files in Japan under the international treaties. Later, the application is published in Japan. When does this application become part of the state of the art against other Japanese inventors? The date the application was filed in Japan. The U.S. filing date is of no effect. Same for Europe and most other countries — the AIA will make it harder for U.S. inventors to obtain patents than foreign countries make it for their own inventors.
To summarize, under the AIA, the state of the art against which inventiveness is judged will be expanded geographically (the foreign sale or the foreign originated patent application) and in time (anything prior to your filing date counts and foreign originated applications count even earlier). None of this expansion was required in order to convert the U.S. from first-to-invent to first-to-file. The net effect is that it will be harder to get a U.S. patent than it was before the AIA, because many more things will be included in the state of the art.
Why were these changes made? Perhaps there was an overall desire to weaken the U.S. patent system. Perhaps there was a recognition that about half of U.S. patents are filed by non-U.S. citizens, so that a weakening of the U.S. patent system may actually be beneficial to U.S. interests. Nonetheless, the result will be a U.S. patent system that has been weakened more than was necessary to accommodate the conversion to first to file.
What can an innovator do to reduce the impact of these changes? Absolutely nothing. You can file your patent application more quickly, to hopefully ensure that you are the first to file. However, once you have filed, there is nothing you can do to prevent this expansion of the state of the art against which your patent application will be judged.
Mitchell S. Bigel is a partner at Myers Bigel Sibley & Sajovec, P.A. Email: mbigel@myersbigel.com.
