US Patents – From First to Invent to First to File: What is Prior Art?

When a patent application is filed with United States Patent and Trademark Office, (USPTO) it is assigned to an examiner, who determines if the invention it describes is worthy of receiving patent protection.  Primarily, the examiner decides whether or not the invention is novel  – and whether or not it is obvious.  These two determinations are made by reviewing the known and most relevant pre-existing technology, i.e. the “ prior art” that is closest to the invention.  In this second article on the change of our patent system from first to invent to first to file, which occurs on March 16, 2013, I investigate the impact that change will have on how we determine what is prior art.

Under the former first to invent system, any art that was publicly known within a one year “grace period” extending prior to an applicant’s filing date was excluded.  Thus, the examiner could not use this excluded art in making his or her novelty and obviousness decisions, even though it was available and “prior” to the inventor’s patent application filing date.  Art that existed prior to the applicant’s filing date could also be barred if it nevertheless became known after the applicant’s date of invention. Since, determining the date of invention is oftentimes problematic, so would be ascertaining correctly if certain art was or was not “prior”.  This first to invent approach then introduces uncertainty into the patent process, especially with regard to determining obviousness, which  may then impact the validity of an issuing patent.  It also arguably resulted in somewhat more protracted and expensive patent prosecutions by forcing the examiner to guess as to the invention date and the applicant having to provide proof thereof.

Under a first to file system determining the prior art is more clear. The prior art is defined as any technology that is in the public domain before the applicant’s filing date.  So, if someone discloses a technology or files for a patent on that technology one day before another applicant, that disclosure is applicable by the examiner against the later filer.  The short term consequence of this change is to, if possible, strongly consider filing a patent application prior to March 16th of this year. The long term consequence is that after that date, inventors do not want to procrastinate with regard to filing a patent application.  The sooner they have an idea and they can develop it to the point that they have sufficient information to prepare an application and file, the better.  In other words, there is more pressure on applicants to file in a timely manner.

One surviving aspect of the old law in this new patent law “regime” is the one year grace period with respect to the inventor’s own prior art.  In other words, US inventors will still be able to sell their invention or publicly disclose it provided they file their patent application within one year of doing so.  Without this provision, the public disclosure of an invention by the inventor would constitute prior art useable by the examiner against a later patent application thereon filed by the same inventor.  However, the disclosures of other parties will now be citable against an inventor’s application up to the day they file, so even if an inventor has the ability to wait a year, it probably is not a good idea to do so.  Also, most other nations do not have an applicant based prior art exception and strictly require inventors to file first before they make any public disclosure of their invention or otherwise lose their right to obtain patent protection.  So, unless you are just interested in patent protection in the US, have your application prepared and filed before you go public with it in any manner.

You might be wondering; “Why did we make this change?”  In addition to the more straight forward prosecution and the issuance of stronger patents resulting from more accurate prior art assessments, I believe the major reason was to harmonize US patent law with that of the rest of the world.  This was done in order to provide a level playing field for all inventors working in what has been for some time, a global economy.  Also, US inventors arguably had an advantage versus foreign inventors to the extent they were able to use the one year grace period to exclude relevant prior art developed overseas.

This situation made it more difficult for business and political leaders in the US to argue for the respect of US IP rights and the prevention of anticompetitive behavior abroad – counterfeiting of US good costs American businesses billions of dollars per year – if we were to a certain extent, susceptible of being charged with protectionist  behavior at home.  Of course, regardless of the reasons for the change, the change is coming; and don’t forget, if you have an invention that you want to patent, try and file your application before March 16th of this year.


This is part two of recent developments in US Patent Law.  Read part one here.   For more information, contact Sten Hakanson, Senior Patent Counsel at Foley & Mansfield at 612.338.8788 or

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