By Robert Schaffer and Joseph R. Robinson
On March 16, 2013, the United States will become a "first-to-file" country for determining the rights of different inventors competing for a patent covering the same invention. This is part of the recent "America Invents Act" (AIA). To best preserve your rights, consider filing new applications and continuation applications before this deadline.
Until now, the U.S. has been the only "first-to-invent" country. When two inventors filed patent applications covering the same invention, the patent was given to the inventor who could prove he conceived the invention first. From March 16th and onward, the patent will be granted to the inventor who files a patent application first. This will be a "race to the Patent Office." Inventors will lose the chance to get patent rights by showing they were the first to invent.
The "first-to-invent" system has advantages over the new "first-to-file" system. It is usually better to have the option of proving earlier inventorship than relying on the date a patent application was filed. To preserve the "first-to-invent" advantages for as long as possible, we recommend filing new and continuation applications for significant inventions in your pipeline before March 16, 2013.
Here are some points to consider.
1. File New Applications Now. New patent applications should be filed before March 16th for any of your inventions that are reasonably ready for patenting. This will grandfather each new invention and application (and possibly all future continuation and divisional applications based on the new application) under the "first-to-invent" rule. Filing a regular application will be better than filing a provisional one, because anything added in a provisional application when it is converted to a regular application (on or after March 16th) could be considered "new matter" (if part of even a single claim) and thus destroy "first-to-invent" status.
2. File Continuation Applications Now. Continuation applications (including divisional applications) should probably be filed now in order to protect them from possible retroactive application of the first-to-file rule - particularly in applications of significant value or which have an early priority date. It is expected that a continuation filed on or after March 16th and claiming priority to a pre-March 16 application will generally stay a "first-to-invent" case, because the application (the disclosed subject matter of the invention) remains the same and has an "effective filing date" before March 16th. Claims presented in the continuation or divisional application must be supported by the parent application's disclosure and earlier filing date. So, in theory, it should be alright to proceed as usual with continuations of pre-March 16th applications, even after March 16th. However, some practitioners in the IP community view this as a risk, because the AIA might be interpreted to allow for post-March 16th continuations to lose their "first-to-invent" status. This risk, whether high or low, can be avoided by filing applications now, in pending families that are important to you.
3. Risk of Losing "First-to Invent" Rights. If a continuation is filed on or after March 16th with new claims (deemed part of the original disclosure), and if any new claim is held not to be supported by the old pre-March 16th disclosure, such that the new application is really a continuation-in-part (CIP), it will be treated as a CIP and given "first-to-file" status. As the proposed law stands, ancelling the "offending" claim will not switch the application back to "first-to-invent." This means that post-March 16th continuations should be filed with original claims only, thereby, ensuring thatthere is nothing new in the application when filed. Any new or amended claims should be submitted later by preliminary amendment.
4. Risk that Claim Amendments Will Trigger "First-to-File" Status. There is some risk that a claim amendment on or after March 16th could change the status of a post-March 16th child application that claims priority to a pre-March 16th parent. Some commentators believe that if an application "at any time" (e.g., by amendment on or after March 16 th) is deemed to contain even one claim that is not supported by the pre-March 16th disclosure (a new matter rejection), the application will irretrievably become "first-to-file." As the proposed law stands, cancelling the offending claim will not switch the application back to "first-to-invent." It is also not clear whether successfully arguing to remove the new matter rejection will switch the application back. Thus, the PTO may push post-March 16th applications into the "first-to-invent" system by issuing new matter rejections with a loss of earlier filing date - with no remedy. Under this view, claims to "new matter" would be given a phantom "effective filing date," for determining first-to-file status.
5. A "Less Risk" Interpretation of the AIA. We do not think a loss of "first-to-invent" status by amendment is the best interpretation of the new statute. The AIA refers expressly, in Sec. 3(n)(1) to a predicate "effective filing date" of a claimed invention. New 35 USC 100(i) provides the familiar "actual filing date" or "priority date" definitions for "effective filing date." It follows that a later-added claim, subject to a new matter rejection, is merely unsupported, and does not have any effective filing date. Thus, the claim simply cannot be granted in that application under 35 U.S.C. § 112, and the "first-to-invent" issue should not arise. We do not read the AIA as creating a "new" post-March 16th effective filing date for later added claims, which has no purpose other than to flip the application into "first-to-file" status. Stated another way, this interpretation would convert any application that contains a claim rejected for adding new matter into a "first-to-invent" CIP, whenever the new claim is introduced. We think this makes sense only if the new claim is presented at the time of filing the new application, where the claim is part of the disclosure as of that filing date, and should not apply to amendments later in prosecution that are rejected as adding new matter. Nevertheless, the proposed law is very unclear, and the best way to protect your rights is to file continuation applications now and, thereby, avoid such uncertainties and arguments.
6. File CIP Applications Now. CIP applications should be filed now, if possible, so that all of the claims in the family will have "first-to-invent" status. A CIP filed after March 16th will remain "first-to-invent" only if every claim is supported by the original pre-March 16th disclosure, which ordinarily would defeat the purpose of a CIP. (A CIP adds "new matter," with a later filing date, usually concerning value-added subject matter the inventors want to claim.) If even one claim in the CIP is deemed to rely on the later filing date, the entire application (and all future applications claiming priority from it) will be "first-to-file." Thus, CIP applications after March 16th will most likely be treated as "first-to-file" by default, unless a strong showing can be made that no original claim needs the added subject matter of the CIP (and provided an adverse PTO determination can be successfully challenged and will change the status of the application).
7. The AIA Expands the Scope of Available Prior Art. After March 16th, a prior use anywhere in the world will qualify as prior art (not just in the USA), and it will not be possible to swear behind an intervening reference, published within one year of the filing date. For example, an application filed on March 16, 2013, would be barred by an anticipatory reference published March 17, 2012, but would not be barred if the application were filed on March 15, 2013. The earlier an application is filed, the more likely it will survive any foreign public uses and intervening prior art.
8. The PTO Rules Are Not Final. We looked at the proposed USPTO rules to implement the AIA, and we could not find any clarity on the issues we discuss here. We called the USPTO and were told that it could not comment because the rules are not final. Confusion over how pending applications might become "first-to-file" is part of the commentary and PTO work on the proposed rules, which the final rules may address. We will not know until the final rules are released, which is expected to be on or about February 16, 2013. Given the short period between publication of the final rules and when they go into effect (one month), it makes sense to start filing applications now. There is no downside to early action, other than the incremental costs of risk-reduction by filing additional applications. The upside is that "first-to-invent" status could make the difference in whether you are able to win a contest between different inventors competing to patent the same subject matter.
We recommend that you consider filing new and continuation applications now for every invention or currently pending application that has significant value to your business.
If you can have new claims ready for continuation applications before March 16th, that is good, but you should at least keep each "first-to-invent" family alive by filing a continuation application with original claims - to be followed by a preliminary amendment in due course. Even more backup would be provided by filing two continuation cases for each pending family. This would increase the options for separating "old" and "new" claims and would make a retroactive change of status to "first-to-file" less likely. For any patent family where you decide not to file a continuation now and do so later, there is still a good chance (especially under our interpretation of the AIA) that "first-to-invent" status can be retained. Such post-March 16thcontinuations should be made only with original claims, followed by a preliminary amendment with new claims.
This is a complex issue in uncharted territory. Let us know if you want to discuss this further. We are ready to assist you in filing any new, CIP, divisional, or continuation applications you decide to pursue.
Please do not hesitate to contact Robert Schaffer, Nicole Sullivan, or Joseph Robinson if you have questions or would like additional information on compliance with the final Rule.
© TROUTMAN SANDERS LLP. ADVERTISING MATERIAL. These materials are to inform you of developments that may affect your business and are not to be considered legal advice, nor do they create a lawyer-client relationship. Information on previous case results does not guarantee a similar future result. Follow Troutman Sanders on Twitter.
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