AIA Overview: First-Inventor-to-File Provisions

By Kevin E. Noonan --

The provisions of the Leahy-Smith America Invents Act (AIA) relating to "First-Inventor-to-File" are set forth in Section 3.  Section 3(a) amends definitions relating to inventorship in 35 U.S.C. § 100.  The "inventor" is defined in new § 100(f) as "the individual, or if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention."  A "joint inventor" is defined as "any 1 of the individuals who invented or discovered the subject matter of the joint invention" (§ 100(g)).  This section also defines a "joint research agreement" along current lines (§ 100(h)).  Importantly for the "first-inventor-to-file" regime, Section 2(a) defines the "effective filing date" either as the actual filing date of the invention (§ 100(i)(1)(A)) or "the filing date of the earliest application for which the patent or application is entitled" under §§ 119, 365(a), 365(b), 120, 121 or 365(c) (§ 100(i)(1)(B)).  Finally, this section defines "the claimed invention" as "the subject matter defined by a claim in a patent or application" (§ 100(j)).

Section 3(b) effects the changes in 35 U.S.C. § 102 that changes U.S. patent law from "first-to-invent" to "first-inventor-to-file."  Instead of subsections § 102(a) through § 102(g), new § 102 provides that:

A person shall be entitled to a patent unless:

(1)  the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2)  the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

These provisions eliminate the distinction for public use, on sale or "otherwise available to the public" between acts occurring in the U.S. ("in this country") and acts occurring abroad ("in this or a foreign country") that have long been a feature of defining prior art under § 102; this effect is made explicit under Section 3(d), which repeals 35 U.S.C. § 104.  New § 102(a)(2) expressly defines the "first-inventor-to-file" aspects of the change, by defining as prior art an earlier-filed patent or application that "names another inventor"; it is likely that this provision will include (or be interpreted to include) a definition of "another inventor" as another "inventive entity," i.e., any difference in named joint inventors.  This section of the new statute also expands the scope of foreign-filed applications as prior art:  instead of being limited as prior art to their filing date (or, in the case of a PCT application, the International Filing Date) the new law gives foreign patents and applications the benefit of their earliest effective filing date, which would be the foreign filing date for such applications.

The grace period that remains under the AIA is contained in new § 102(b), which provides exceptions that include:

102(b) EXCEPTIONS

(1)  DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if--

(A)  the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B)  the subject matter disclosed had, before such disclosure, been publicly disclosed 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.

(2)  DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if--

(A)  the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B)  the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed 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; or

(C)  the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

New § 102(b)(1)(A) establishes the one-year grace period for the inventor's own disclosure or disclosure by another who derived the invention ("obtained directly or indirectly") from the "true" inventor.  New § 102(b)(1)(B), on the other hand, relates to a "second" disclosure of the subject matter that had previously been disclosed ("before such disclosure [had] been publicly disclosed") by the inventor or "another" who derived ("directly or indirectly") the invention from the inventor, also presumably less than one year prior to the effective filing date.  Thus, this new provision provides that the "true" inventor's public disclosure "immunizes" the inventor from disclosure by another, presumably provided that the "true" inventor files a patent application within one year of his or her initial disclosure (i.e., within the grace period).

New § 102(b)(2) disqualifies as prior art disclosure in a patent or patent application by another who "obtained [the subject matter] directly or indirectly from the inventor" (§ 102(b)(2)(A)) or wherein the subject matter had been publicly disclosed by the inventor or another who derived the invention from the inventor prior to the effective filing date of the earlier patent or application (§ 102(b)(2)(B)) or there was joint ownership ("not later than the effective filing date of the claimed invention") of the earlier disclosed subject matter and the claimed invention.  These provisions provide an incentive for early disclosure of inventions within the one-year grace period, because the effect of earlier disclosure is to eliminate as prior art any disclosure or patent or patent application that occurs after the first public disclosure by the inventor, provided the inventor files a patent application on the subject matter within the one-year grace period.  However, experience with the current law has established that such a disclosure must be an enabling disclosure, and that prior disclosure could create the possibility (if not the likelihood) that variations (obvious or otherwise) could be created and filed by "another," resulting in a diminution of the "true" inventor's patent rights.

New § 102 also defines common ownership under a joint research agreement (new § 102(c))(which seems to broaden the protections thereof from obviousness currently under § 103 to novelty under the new provisions), and the intent for "continuity" of the treatment of joint research agreements under the new law and the CREATE Act (new § 102(d)).

Section 3(c) amends current 35 U.S.C. § 103, which sub silentio repeals §§ 103(b) and (c):

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.  Patentability shall not be negated by the manner in which the invention was made.

Section 3(e) repeals statutory invention registrations, and §§ 3(f) and 3(g) are "conforming" amendments (§ 3(f) amends Section 120 to change "which is filed by an inventor or inventors named" to "which names an inventor or joint inventor").

Section 3(h) provides an amended § 291 defining "derived patents":

(a)  IN GENERAL- The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.

(b)  FILING LIMITATION- An action under this section may only be filed within 1 year after the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.

This section thus conforms the new regime to what were heretofore "interfering patents," under circumstances where one of the patents was derived from the "true inventor." 

Section 3(i) provides for "derivation proceedings" in the Office by amendment of 35 U.S.C. § 135:

(a)  INSTITUTION OF PROCEEDING- An applicant for patent may file a petition to institute a derivation proceeding in the Office.  The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application and, without authorization, the earlier application claiming such invention was filed.  Any such petition may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention, shall be made under oath, and shall be supported by substantial evidence.  Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.  The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.

(b)  DETERMINATION BY PATENT TRIAL AND APPEAL BOARD- In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner's application and, without authorization, the earlier application claiming such invention was filed.  The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings.

(c)  DEFERRAL OF DECISION- The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until 3 months after the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition.  The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.

(d)  EFFECT OF FINAL DECISION- The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims.  The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation.

(e)  SETTLEMENT- Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute.  Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement.  Any written settlement or understanding of the parties shall be filed with the Director.  At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause.

(f)  ARBITRATION- Parties to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration.  Such arbitration shall be governed by the provisions of title 9, to the extent such title is not inconsistent with this section.  The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates.  The arbitration award shall be unenforceable until such notice is given.  Nothing in this subsection shall preclude the Director from determining the patentability of the claimed inventions involved in the proceeding.

The right is limited to an "applicant for patent" within one year after first publication of the derived application, thus imposing an obligation to monitor publication databases for any possibly derived patent applications.  Whether these proceedings will include patents (as current interference practice does) is unclear; an argument can be made that Section 291 is restricted to derived patents and new Section 135 for derived applications.  This interpretation is supported by the limitation that derivation proceedings in the Office must be initiated within one year of publication (an event that should precede patenting in most cases). In addition, the petition must be supported by "substantial evidence," but without any of the provisions for discovery (or obligations to provide evidence) currently available under interference provisions of current law.  In addition, the Board is given broad discretion to delay action on any petition until after the putatively derived patent has granted, without capacity to appeal such a decision (other than, perhaps, a "civil action").  And, while other portions of the bill establish the Patent Trial and Appeal Board that will be related to the current Board of Patent Appeals and Interferences, the Office will need to create the infrastructure for this "new" adjudicative body.  Section 3(j) of the bill strips current law of all references to interferences wherever they appear in the statute.

Section 3(k) introduces a 10-year "statute of limitations" into 35 U.S.C. § 32 regarding disciplinary proceedings before the Office and a biennial description of incidents that were barred from being brought under this section by the statute of limitations.  Section 3(l) relates to a small business study to determine the effects of the change to "first-inventor-to-file," with a Report to be provided to Congress not later than one year after the Act is enacted.  Similarly, Section 3(m) provides for a Report to Congress on prior user rights in the U.S. and abroad in Europe, Japan, Canada, and Australia and their effects "if any[] on small businesses, universities and individual inventors."

Section 3(n) provides that the effective date of this bill, if enacted, is 18 months from the date of enactment, and continuing present interference practice for all patents and applications having an effective filing date prior to the date of enactment of the provisions set forth in Section 3 of the Act.  Finally, Sections 3(o) and 3(p) express the "Sense of the Congress" that the changes effected by these provisions of the Act "will promote the progress of science and the useful arts" and will "promote harmonization of the U.S. patent system with patent systems" in the rest of the world and "promote greater national uniformity and certainty" in patenting.

Comments

[Randy Landreneau]

Kevin -

Regarding petition for Derivation: "Any such petition may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention..."

Does "publication of a claim" refer only to an 18 month publication or issued patent, or could it be any publication that shows the features of the invention that are claimed?

Even if it is only the former, a "true inventor" would have to spot the publication and then petition for a Derivation within a year, whether or not the offending patent had issued or the "true inventor" had even filed for a patent yet. This is an amazingly excessive burden on the "true inventor."

If "publication of a claim" refers to any publication of the features described in the claim, the burden is beyond unworkable.

- Randy Landreneau

[Tom Hunter]

The statement:

Thus, this new provision provides that the "true" inventor's public disclosure "immunizes" the inventor from disclosure by another, presumably provided that the "true" inventor files a patent application within one year of his or her initial disclosure (i.e., within the grace period).

is not quite accurate. The term "immunizes" implies that a first disclosure (not a patent application) protects the inventor from any 3rd party disclosure during the intervening year suggesting that a disclosure is equivalent to a provisional application. This is not the case. 3rd party publications that are not "derivations" published during the intervening year can be effective prior art.

[Tom Hunter]

Kevin -

Further to my previous comment -- the following is not correct:

the effect of earlier disclosure is to eliminate as prior art any disclosure or patent or patent application that occurs after the first public disclosure by the inventor,

You are only shielded from your own disclosures or derivations thereof. Independently obtained disclosures are effective prior art against your subsequent filing even if published during your grace period

This seems to be widely misunderstood.

[Tom Hunter]

Kevin - I stand corrected -- seems the "or" between 102(b)(1)(a) and (b) changes everything. Hard to believe this will not later be corrected.

[Kevin E. Noonan]

Dear Tom:

Thanks for the comments. They illustrate the dangers of having patent laws written by Congressional staffers, particularly in comparison to the law as written by Judge Rich. I agree that as the inconsistencies become evident Congress will need to pass clarifying amendments (as they did with the AIPA 12 years ago).

[Kevin E. Noonan]

Dear Randy:

Agreed that the burden is high, and higher on a sole inventor or university. As with much of the law, it seems to have been written for the benefit of companies that had the economic wherewithal to monitor extensively, or to pay outside counsel to do so on their behalf.

Thanks for the comment.

[Skeptical]

Tom you state:
seems the "or" between 102(b)(1)(a) and (b) changes everything.

You are closer with your first thoughts (I fear).

102(b)(1)(a) and 102(b)(1)(b) may have an "or" between them, but the subjects of the two clauses are different. Of course this means that the two clauses cannot be merely conjunctive.

I am not sure ANYONE can fully know what the law as written actually means.

I have been on the fence too whether or not the congressional record matters. I believe it matters for ambiguity, but not for vagueness. In fact, some even state that as written, the new law is not even vague - just not what most believe it to say. In that case, the congressional record is not even admissable.

I am still waiting for more debates to help sway me.

[Skeptical]

Thanks Kevin for your continued coverage.

But does anyone else feel that the "sense of congress" fails to pass the sniff test?

"Finally, Sections 3(o) and 3(p) express the "Sense of the Congress"...

"promote harmonization of the U.S. patent system with patent systems" in the rest of the world and

"promote greater national uniformity and certainty" in patenting."

I am not sure how the odd (and definitely still very different from ROW) systems will promote harmonization, let alone whether harmonization for its own sake is even a goal worth pursuing.

Since patents are a federal issue, the greater national uniformity statement is utter nonsense. This type of "motherhood and apple pie" should be a red flag that smoke is being blown.

And as has been noted across the patent lanscape, the only "certainty" from this new law is that uncertainty will reign for the foreseeable future.

[Vanessa]

Kevin, I wonder if you could help me clarify something? You said, "This section of the new statute also expands the scope of foreign-filed applications as prior art: instead of being limited as prior art to their filing date (or, in the case of a PCT application, the International Filing Date) the new law gives foreign patents and applications the benefit of their earliest effective filing date, which would be the foreign filing date for such applications." I think you are referencing 102(d)(2) here? If you cross reference "the patent or application for patent" language from 102(d) back to 102(a)(2), it must be a patent issued under section 151, or an application deemed published under section 122(b)--both of which are US patents/applications. Doesn't this mean that foreign applications only get the benefit of their effective filing date if there is a later US patent/application in the chain?

[Randy Landreneau]

Kevin -

Thanks for answer, but what about the other part:

Does "publication of a claim" refer only to an 18 month publication or issued patent, or could it be any publication that shows the features of the invention that are claimed?

Do you know the answer to this or will it be up to future court action or other interpretation?

- Randy Landreneau

[Randy Landreneau]

Kevin -

Regarding "Any such petition (for derivation) may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention..."

If the "deriver" files and opts out of the 18 month publication, and the inventor files soon after and does not opt out, the first publication of a claim will be the inventor's 18 month publication. By the time the "deriver's" patent issues, it could already be too late to petition for a derivation.

Am I totally off on this, or is this a correct interpretation?

Randy Landreneau

[Kevin E. Noonan]

Sorry I've been AWOL - JDRF Century Ride in Death Valley - very hot there.

In inverse order:

Randy: I think the statute will be interpreted so that whenever "true inventor" A becomes aware of deriver B's patent, she must file a derivation action within 1 year of publication (patent or application). So while your scenario is not outside the literal words of the statute, I don't think a reviewing court would ignore the statute's purpose and deny the action under the circumstances you postulate.

Thanks for the hypo.

[Kevin E. Noonan]

Dear Randy:

I think the statute must refer to a patent publication, because mere "publication" of the invention by another does not implicate the derivation provisions of the new law (just the novelty provisions and whether the "true" inventor has either filed OR has her own publication that started the 1-year grace period.

Thanks for the comment.

[Kevin E. Noonan]

Dear Vanessa:

I think the law has always been that a foreign-filed patent application has effect as prior art either 1) upon its publication under "old" section 102(a) or 102(b), or 2) as part of a priority chain to a US or PCT application (under "old" section 102(e)).

The new statute does require a "US" filing, as did prior law (e.g., a published PCT application got the benefit of the International filing date only if it was published in English and designated the US). The difference now is that the foreign priority date becomes the earliest effective filing date for determining who was the "first inventor to file."

But you raise an interesting question with regard to a PCT application that does not ultimately result in a US national phase filing - while such an application stemming from a US provisional application can be expected to have a preclusive effect, I need to think about what would happen if the priority document was merely a foreign-filed application. I am inclined to think that since Sections 365(a), (b), and (c) merely establish the right to file a US application (not a requirement), a PCT designating the US would still be enough for the foreign priority date to the the first "effective filing date" and thus for the PCT application to be prior art as of the filing date of the foreign-filed priority application. But I can see arguments to the contrary.

Thanks for the hypo.

[Confused SCOTUS]

Kevin,
I am not sure what you mean in your response to Vanessa's comment here:
"I think the law has always been that a foreign-filed patent application has effect as prior art either 1) upon its publication under "old" section 102(a) or 102(b), or 2) as part of a priority chain to a US or PCT application (under "old" section 102(e))."

Under 102(e) only a U.S. patent or U.S. patent application publication can constitute prior art. In re Hilmer does not allow a foreign priority date for a rejection. Of course, AIA will abolish this.

What I am wondering is if a rejection is made under AIA based on a U.S. patent that claims priority to a foreign application, how does the Examiner know that all of the subject matter in the U.S. patent is actually in the foreign priority document? Many foreign applicants file additional embodiments in their U.S. applications.

[Kevin E. Noonan]

Dear Confused:

No, actually a PCT application published in English that designated the US was prior art on its publication date as of its International Fiiing Date under (old) 102(e).

You are correct that In re Hilmer precluded a US application having a foreign priority document from asserting the foreign filing date under 102(e). However, my point is that the "effective filing date" language in the AIA means that a qualifying US or PCT application has a prior art effect under the new law that arises upon publication of the US application or publication of a PCT application designating the US.

I think. Thanks for the comment.

[Confused SCOTUS]

Kevin,

No? Didn't I say "a U.S. patent application publication". I think you mean "YES, but to be more specific..."

Also, didn't you say in your response to Vanessa, "part of a priority chain to a US or PCT application (under "old" section 102(e))"? In which I respond, NO.

My point, again, is that priority plays no role in 102(e). A priority document has no impact on the prior art effect of a U.S. patent or U.S. patent application publication (of course provided that a U.S. patent application publication that is a national of a PCT application be published in English).

I think you are right with what you mention in your last paragraph, but I have read some materials that state that AIA "gives prior art effect to foreign references" without the U.S. distinction. I am not sure if these materials are overlooking the "patent.. 151" or "publication 122b" language in AIA 102(b) or if they really do think that any foreign reference constitutes prior art as of its filing date. Be careful of what is being published out there, apart from the actual text of the AIA itself.

[Confused SCOTUS]

Kevin,

I have another question, which arises from your above coverage of AIA.

You state above: "New § 102(b)(1)(A) establishes the one-year grace period for the inventor's own disclosure or disclosure by another who derived the invention ("obtained directly or indirectly") from the "true" inventor."

My question is how did you conclude that derived from means "obtained directly or indirectly from"?

Is it possible Congress meant different meanings attach to "derived from" and "obtained directly or indirectly from"?

[Kevin E. Noonan]

Dear Confused:

102(b)(1)(A) uses the "obtained directly of indirectly" language. The amendment to 291 says "derived from." While it is possible Congress meant something different, I doubt there is any legislative history, and think it is merely another example of sloppy drafting (which seems to be rampant in this Act). I know of no other grounds for bringing a derivation action - but implied in your question is whether "true" inventor A has a cause of action if "deriver" B files an application on the combination of "X+Y" after learning of "X" from inventor A.

Answer: don't know. May depend on whether "X+Y" is independently patentable.

Something to keep the CAFC busy for another 20-40 years.

Thanks for the comment.

[Confused SCOTUS]

question is whether "true" inventor A has a cause of action if "deriver" B files an application on the combination of "X+Y" after learning of "X" from inventor A.

Every day another ambiguity in the AIA. Perhaps a carve-out for invention Y?