The PTO has now published proposed rules to implement the change from first-to-invent to first-to-file that applies to applications filed on or after March 16, 2013. The rules seek to accomplish several goals required by the America Invents Act: (1) convert the US patent system from a first-to-invent to a first-to-file system; (2) treat US patents and published applications as prior art as of their filing date, whether in the US, as international applications, or as foreign applications; (3) eliminate the requirement that prior public use or sale be “in this country”; and (4) treat commonly owned (or subject to a joint research agreement) patents and published applications that have been filed but not published as being by the same inventive entity for both novelty and non-obviousness purposes.
The proposed changes will permit an applicant to file an affidavit or declaration showing that: (1) A disclosure upon which a claim rejection is based was by the inventor or joint inventor or by a party who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) there was a prior public disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. This declaration could be used by the applicant to show that certain prior art should fall under a grace period exception and not be used to reject the claims of the application.
To implement the change that permits patents and published applications to be prior art as of their earliest effective filing date, even if not in the US, the PTO proposes to require a certified copy of the earlier-filed non-US application by the later of 4 months from the US application filing date or 16 months from the foreign application filing date.
The most onerous of the new requirements will be for applications filed after March 16, 2013 that claim the benefit of a US or foreign application filed prior to that date. If the later-filed application contains a “claim to a claimed invention” (?) that is not supported by the earlier-filed application, or if the later-filed application includes subject matter that was not disclosed in the earlier filed application, the applicant must provide a statement to that effect. The time-frame for providing such a statement is the later of 4 months from the filing date of the later-filed application, 16 months from the filing date of the earlier-filed application, or the date that a “first claim to a claimed invention” is presented that is not supported by the earlier-filed application.
The PTO has also published examination guidelines for implementation of the first-to-file regime. This is an important document that should be read carefully to determine how the PTO plans to interpret various provisions of the America Invents Act.
For example, contrary to caselaw, the PTO will interpret “disclosure” as a “generic expression intended to encompass . . . being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application.”
The guidelines also provide other guidance on the “grace period” exceptions. One of the exceptions provides that a subsequent disclosure by another is not prior art if made after the inventor discloses the subject matter of the invention, provided that the subject matter was obtained the subject matter directly or indirectly from the inventor. The guidelines make clear, however, that this exception should not be relied upon.
This exception does not apply, however, if the “subject matter” disclosed is not identical. Even insubstantial changes, or only trivial or obvious variations will take this exception out of play. For example, if an invention is disclosed by an inventor, a competitor sees the disclosure (i.e., obtained it from the inventor) and then discloses an improved version of the invention, this exception would not apply. The inventor would not be able to rely upon this exception.
As others have pointed out, whether a patent claim is supported by an earlier disclosure that may be somewhat general in nature is often a very fact specific inquiry. Examiners and applicants often disagree about this issue. Why is the burden on the applicant to make such an admission?
What is the penalty for not making the statement within the required time period or for later withdrawing the statement? The PTO may require the applicant to point out exactly where (by page, paragraph, or line number) support for the claims is present in the earlier application. The PTO wants to “readily determine” whether to follow the first-to-invent or first-to-file rules when examining an application with a filing date after March 16, 2013.
And, why does the PTO need to know if new disclosure was added? The statute only requires the application to fall under the first-to-file rules if it includes a claim that is not supported by the earlier application. The statute doesn’t refer to added subject matter. What is the purpose of this requirement other than to trip up applicants?
If the new rules and changes sound confusing, that’s because they are. My earlier advice regarding the transition remains. My other advice is to seek the help and assistance of a patent attorney in dealing with this transition.
The comment period for the proposed rules lasts until October 5, 2012. These proposed rules and guidelines demonstrate how significantly the US patent system will changes after March 16, 2013.