"Beware the Ides of March" or "Much ado about nothing!"

"Beware the Ides of March" or "Much Ado About Nothing!"

Come March 16, 2013, the U.S. Patent Office adopts a "first ['inventor'] to file" system from its present, "first to invent" system.  Certainly, the rules will “change” after March 15, 2013 but the effect may be minimal.  In order to see how, one needs to understand the current "first to invent" rule, how it has worked over the decades, and compare it to how the new "first to file" rule will function.

Under the current "first to invent" rule, the first person(s) to create a new invention and subsequently file a patent application, is entitled to consideration for a patent.  Although an applicant is initially granted an "effective" date of invention as the date a patent application is filed, under the "first to invent" rule, an applicant can submit evidence of an earlier date of invention.  The earlier date is beneficial if the applicant needs to prove he or she invented the invention before another as well as for eliminating references from being cited against a patent application when the Patent Office is accessing a patent application for novelty and non-obviousness (e.g. requirements for patentability).

The soon to be enacted "first to file" system will eliminate an applicant from establishing an earlier date of invention.  But, will this rule change have any real impact on most patent applications?  In other words, should applicants "Beware the Ides of March" or is this "Much ado about nothing"?

Professor Dennis D. Crouch (University of Missouri School of Law and creator and author of the blog, Patently-o) in his 2010 Michigan Telecommunications and Technology Law Review, Vol. 16, No. 1, 2010 law review article, Is Novelty Obsolete? Chronicling the Irrelevance of the Invention Date in U.S. Patent Law suggests that a first to file system will have minimal effect on patent applicants.  Based on his analysis of 21,000 patent applications, very few applicants availed themselves of or were successful in establishing an earlier filing date.  For example, only 0.1 % successfully relied (exclusively) on establishing an earlier date of invention, to overcome an Examiner's rejection.

Other provisions to take effect on March 16, 2013 may also have limited impact on most U.S. inventors.  For example, starting March 16, the applicant's invention in public use or on-sale anywhere in the world will be considered prior art against a patent application, thereby possibly limiting patentability. Under current law, the public use and on-sale are limited to the U.S.  Since most U.S. inventors would have U.S. public use and/or on-sale inventions in the U.S. first (if at all), rather than somewhere else in the world, it appears on first blush that this change in the law will also have little impact on most U.S. inventors.

One provision which may have more impact on a U.S. inventor is that starting March 16, 2013, an applicant is given a limited* one year grace period to file a U.S. patent application after his or her own public disclosure* (which may include use or on-sale activities).  After the grace period expires, an applicant will be barred from filing a patent application.

Under the current law, the one year grace period for filing a patent application after a public disclosure, use or on-sale activities is not limited to only those of the inventor.  Consequently, under the existing law, an inventor could file a patent application up to one year after any public disclosure (i.e. the inventor's or a third party's).  Non-disclosure agreements and secrecy are two ways for limiting potential pitfalls from third parties' unauthorized public disclosure, which may bar patentability under the new law. 

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

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