US Patent Law – From First to Invent to First to File

On March 16, 2013 US patent law will undergo significant changes, as it moves from a first to invent to a first to file system.  This change will harmonize American patent laws more closely with those of the rest of the world, however, it also raises two big issues: how to decide who gets patent rights between two inventors or inventor groups that independently develop the same technology and then apply for patent protection; and how to define ‘prior art’, which is, more or less, the sum of human technology that will be compared with an inventor’s invention and used to determine whether or not the technology is deserving of patent protection.

When two independent inventors create the same technology and file for patent protection at about the same time, what should happen?  All countries, other than the United States, give patent rights to the inventor who is the first to file the patent application.  This approach is designed to incentivize inventors to file and disclose their invention so that society can reap the economic benefits therefrom sooner rather than later.  Until now, however, the United States gave the patent to the one who invented first, rather than filed first.  The primary rationale behind this approach is that it was thought to level the playing field for less well funded inventors going against a larger business that can use their economic advantage to more easily and quickly pay for and obtain a patent filing.

One of the reasons that the first to invent system will be a thing of the past is the cost associated with determining who invented first.  An ‘interference’ proceeding is the patent world’s way of determining who invented first and can be quite expensive and time-consuming – think in terms of a small trial.  Moreover, the process is inherently imprecise as determining the actual moment of invention is extremely difficult given the convoluted fact patterns that typically emerge involving proof of; the conception date, the date at which the invention had matured to an actual operable embodiment, and whether or not both parties had been duly diligent in their march to the patent office or had inexcusably delayed the process.  Furthermore, in these proceedings, at least 60% of the time, the inventor who filed the patent application first won anyway and there was really no good data to show that the smaller inventor gained any real advantage..

As mentioned earlier, the concept of prior art is important in determining if an inventor deserves patent protection for their invention.  Establishing patentability requires that the inventor overcomes two primary hurdles, namely; is the invention novel? and is it nonobvious? If the invention already exists in the prior art it is not novel and there would be no societal benefit to “re-patent” and make exclusive to an inventor what everyone already had free access to.  The more difficult question in the patentability process is determining whether an invention is ‘obvious’ or ‘non-obvious’.  If a person of average technical skill in the field of the invention could have come up with the invention as a matter of routine application of their knowledge, (they are presumed to be aware of all the relevant prior art), without requiring any particular inventive insight on their part, then the invention is considered obvious and not patentable.  Clearly, application of the obviousness test is highly subjective and fact driven and depends heavily on what technology was contained and described in the prior art.

Under the old system, any art that was available within a one year period extending prior to an applicant’s filing date was excluded, even though it was available and ‘prior’ to the inventor’s application filing date.  Art was also excluded if it came after the applicant’s date of invention.  Since, as discussed above, determining the date of invention is problematic so would be ascertaining correctly if certain art was or was not ‘prior’.  This approach then introduces uncertainty into the patent process, especially with regard to determining obviousness, and therefor into the ultimate validity of any issuing patent.  Excluding art existing one year before the filing date advantaged US applicants but was problematic for the US when arguing against anti-competitive behavior of the part of other nations in the area of intellectual property.

Accordingly, it was decided to go to a first to file system because; it will eliminate the costs associated with adjudicating interference proceedings, our country will have stronger standing to argue against the anti-competitive intellectual property practices of other nations, and as it would streamline the patent application process by more easily and accurately determining what information is or is not prior art, thereby saving additional tax dollars while at the same time issuing stronger patents less vulnerable to an invalidity attack.

This is part one of a series of articles on developments in US Patent Law.  For more information, contact Sten Hakanson, Senior Patent Counsel at Foley & Mansfield at 612.338.8788.

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