America Invents Act: First-to-File Transition

The America Invents Act that was signed into law in September changes the US patent system from a first-to-invent to a first-to-file regime. 

The magic date for the transition is March 16, 2013.  A patent application that has at least one claim having an effective filing date after March 16, 2013 will be subject to the first-to-file provisions, while applications where all claims have an effective filing date prior to March 16, 2013 will be adjudged under the current first-to-invention system.  This means that we will be living under the dual regime for a long time, as divisional, continuation, and even some CIP applications where all claims have support in an earlier application, even if filed after March 16, 2013, will be subject to first-to-invent.  Non-provisionals claiming the benefit of earlier provisional applications filed beforet he magic date are subject to first-to-invent, provided the claims have support in the provisional.

Examples

First-to-Invent

Suppose A invents X on December 14, 2011 and B invents X on December 30, 2011; B files a patent application claiming X on March 23, 2012 and A files a patent application claiming X on April 1, 2012.  Under the first-to-invent system, if A was diligent in reducing X to practice and can prove prior invention, A will prevail over B in an interference proceeding and be awarded the patent.

First-to-File

If we change the dates of the above, we will change the result.

Suppose A invents X on December 14, 2012 and B invents X on December 30, 2012; B files a patent application claiming X on March 23, 2013 and A files a patent application claiming X on April 1, 2013.  Under the first-to-file system, B will prevail over A because B filed a patent application claiming X before A.

Transition Timing Paradox

Mark Lemley, law professor at Stanford Law School, has pointed out yet another situation that could be problematic.

Suppose A invents X in September 2012 and B invents X in December 2012.  B files a patent application claiming X in February 2013 and A files a patent application claiming X in May 2013.

It would seem that A cannot get a patent because he filed after March 16, 2013 and is thus subject to the first-to-file rules.  He wasn’t the first to file. 

B is subject to the first-to-invent rules because he filed before March 16, 2013.  B was not, however, the first to invent.  Thus, it seems that B cannot get a patent.

Did Congress really intend for situations like this where no one can get a patent?

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2 Responses to “America Invents Act: First-to-File Transition”

  1. Paul Says:

    Mark Lemley’s example is quite perplexing. Perhaps Congress will come up with a clarifying amendment before March 2013, and more preferably before March 2012.

  2. Cheryl R. Figlin Says:

    Transitions are always difficult. I wonder if there will be a flurry of filings before the March 2013 date.

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