Basic Patent Law: I. The New “First Inventor to File (with Grace)” World
First in a series of articles aimed at scientists, engineers, business managers, non-patent lawyers, and other professionals that desire or need to understand basic principles of patent law and practice.
On March 16, 2013, the United States will become a “first inventor to file” patent system instead of a “first to invent” system. Until now, the U.S. awarded a patent to whoever could demonstrate the earliest completion of an invention rather than whoever won the race to file a patent application. When two inventors claimed the same invention, the Patent Office could use an “interference” proceeding to resolve who actually invented first and was therefore entitled to the patent. With the new law, interferences will eventually go away. The only issue, aside from who filed first, is whether the first filer actually derived the invention from another and is therefore not a true inventor, a rare occurrence.
“First to file” seeks to harmonize U.S. patent law with that of most other countries. An important distinction remains, however. U.S. patent law uniquely allows a one-year grace period. Thus, an inventor can publish a paper, make a presentation, or otherwise disclose the invention prior to filing a patent application and still be entitled to a patent, provided that the patent application is filed within one year of the disclosure. “Publishing ahead” of filing a patent application will prevent anyone else from patenting the same invention anywhere, even if the other is the first to file a patent application. For instance, if A makes a presentation at a conference, then files a patent application within one year, and B files a patent application claiming the same subject matter after A’s presentation but before A files, A still gets the patent. A’s filing is within A’s one-year grace period, and we presume that B got (or could have gotten) the “good news” about the invention from A’s presentation.
At first blush, “publishing ahead” sounds like a good idea. However, most inventors want to preserve not only their right to a U.S. patent, but also their rights to patents around the world. Because most countries insist on absolute novelty, an early disclosure by A will forfeit patent rights almost everywhere but the U.S. The one-year grace period therefore has limited value.
Many corporations try to file a patent application before any presentation, publication, or other non-confidential disclosure is made outside the company. In practice, however, it is often necessary to disclose patentable ideas to third parties before a patent application can be filed. In these situations, a confidential disclosure agreement is used to prevent the inventive subject matter from entering the public domain.
In sum, the patent world is a simpler place with the new “first inventor to file (with grace)” patent system ready to roll. U.S. inventors need to remember that any non-confidential disclosure made before a patent application is filed will sacrifice valuable rights outside the U.S.
Stay tuned for Part II of our Basic Patent Law series!
– Jon Schuchardt
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This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.