35 USC § 102 and the First to File System

35 USC § 102 and the First to File System

The First to Invent system, which has been the fundamental base of US patent law for more than 200 hundred years, has now been replaced by a First to File system, sort of. In this Analysis, Jim Longacre discusses the similarities and differences between the old and new patent law and gives extensive examples of patentability based on application of the old versus the new law. He writes:

The Details of the New First to File System

     The details of the new first to file system are embodied in a brand new and very different 35 USC § 102 and 35 USC § 103. Learning the new system begins most logically by firmly grasping when the old 35 USC §§ 102 and 103 apply, or if the new 35 USC §§ 102 and 103 apply. If you are an experienced patent professional, then you come to this task with an intimate understanding of the ins and outs of old 35 USC §§ 102 and 103. Whether you have that facility or not, understanding new 35 USC § 102 probably should to start with reviewing old 35 USC § 102, and then comparing the similarities and differences.

     The old 35 USC § 102 continues to apply to all issued US patents and all US patent applications that have an effective filing date prior to March 16, 2013, which is eighteen months from the date of enactment. Effective filing date means an earliest date to which the application is entitled because of an earlier filing of a provisional application, a foreign application, or a parent US application.

     The first thing to remember is that the choice is "either/or" Either old 35 USC § 102 and 103 apply or new 35 USC § 102 and 103 apply. There are NO circumstances in which both apply.

     Examples: -- A US application is filed on February 2, 2013. Old 35 USC § 102 applies.

     -- A US application is filed on February 2, 2014. New 35 USC § 102 applies.

     - X files a provisional application on June 1, 2012. A complete US application is filed on June 1, 2013 properly referencing the provisional application. The old 35 USC § 102 applies.

     - X files an application in Canada on June 1, 2012. A complete US application is filed on June 1, 2013 properly claiming priority from the Canadian application. The old 35 USC § 102 applies.

     - X files a US application on June 1, 2012. A continuation application is filed on June 1, 2013 properly referencing the parent application. The old 35 USC § 102 applies.

     35 USC § 102 sets forth six sections (excluding 35 USC § 102(c)) that define sets of conditions under which an applicant does not get a patent, that "bar" the patent. Hence, we often refer to these conditions as statutory bars.

     ....

Effective Filing Date

     How then do we determine that earliest effective filing date, and how does it differ between the old and new 35 USC § 102?

     Fundamental to the US patent system is the concept of priority, which remains essentially unchanged under the new First to File system. Priority allows an applicant to obtain the benefit of an earlier filing date of another patent application by the same applicant. That earlier application could be a foreign application and priority is then under 35 USC § 119(a)-(d). That earlier application could be a foreign application filed prior to the filing of a PCT application under 35 USC §§ 365(a) and(b). That earlier application could be provisional application under 35 USC § 119(e). That earlier application could be a US parent application, and the latter-filed application a continuation, a continuation-in-part or a division under 35 USC § 120.

     When you have priority, in a way, you have at least two filing dates. Of course, you have the actual filing date, the date this application is filed in the Office. But you also have an effective filing date which is the priority date. Under both old 35 USC § 102(e) and new 35 USC § 102(a)(2), the priority date of a published or issued US application is the earliest effective filing date. With one critical exception.

     Generations of patent students have been confused by the fact that a US patent and patent application has two natures. First, it claims an invention against which prior art is applied, and, second, it defines prior art against which the patentability of other inventor's claims is weighed. In both natures, the same earliest effective filing date is at play. That earliest effective filing date determines the date of prior art of published and patented applications. It also determines the date of the claims of that application being weighed against other prior art. The earliest effective filing date is the same in both instances, with that one critical difference.

     Under old 35 USC § 102, a US issued or published application is entitled to every priority date as its earliest effective filing date to determine patentability, foreign (35 USC §§ 119(a)-(d), domestic (35 USC § 120) and provisional (35 USC § 119(e)). But, as prior art, under old 35 USC § 102, only domestic and provisional priority apply. This strange rule is the result of a long ago decision of In re Hilmer, 53 C.C.P.A. 1288 (C.C.P.A. 1966) [enhanced version available to lexis.com subscribers]. Under new 35 USC § 102, the In re Hilmer rule is gone. All priorities will count in determining prior art and patentability.

     Examples - A US patent application is filed on June 2, 2011. The application references a provisional application filed June 2, 2010. The application is published on July 1, 2011 . The application is prior art under both old 35 USC § 102(e) and new 35 USC § 102(a)(2) as of its earliest effective filing date, which is June 2, 2010.

     - A US patent application is filed on June 2, 2011. The application is a continuation of a parent application filed June 2, 2010. The application is published on July 1, 2011 . The application is prior art under both old 35 USC § 102(e) and new 35 USC § 102(a)(2) as of its earliest effective filing date, which is June 2, 2010.

     - A US patent application is filed on June 2, 2011. The application claims priority from a Canadian application filed June 2, 2010. The application is published on July 1, 2011. The application is prior art under both old 35 USC § 102(e) as of its actual filing date of June 2, 2011, and new 35 USC § 102(a)(2) as of its earliest effective filing date, which is June 2, 2010.

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