Transition of Patent Procedure to First-to-File Coming Soon
By Derek L. Prestin
March 1, 2013
The Leahy-Smith American Invents Act (AIA) will be making a significant change to the process of obtaining a patent in the United States on March 16, 2013, when the United States patent system transitions from the long-standing first-to-invent system to a first-to-file system. This change will bring U.S. patent law into line with the patent laws of the majority of the rest of the world, but represents a significant change to U.S. patent law.
Under the current first-to-invent system, if two or more patent applications are filed on the same invention, or inventions that are so similar that the Patent Office believes that a patent cannot be granted on both inventions, the Patent Office will hold an interference proceeding, or priority contest, between the applications. An interference proceeding is an administrative proceeding conducted by a panel of administrative patent judges that determines which of the inventors was the first to reduce the invention to practice, or which inventor first “invented” the invention. Under this system, the inventor that first reduced the invention to practice may obtain the patent on the invention.
For any patent application filed on or after March 16, 2013, a first-to-file system will apply. Under a first-to-file system, the inventor that first reduces an invention to practice will not necessarily be able to obtain a patent on that invention and there will no longer be any interference proceeding. Instead, the inventor who first files a patent application with the Patent Office may obtain the patent on that invention. Any applications on the same invention filed by different parties after the effective filing date of this first patent application will be unable to obtain a patent, even if the later application is filed by an inventor who was first to reduce the invention to practice. That is, the date of reduction to practice is no longer relevant to which inventor will be allowed to attempt to obtain a patent on an invention.
The only circumstance under which an inventor who was first to invent an invention (“Inventor A”), but filed a patent application on the invention after the filing of a patent application on the invention by another party (“Inventor B”), may still obtain the patent on the invention is where Inventor A can show that Inventor B derived the invention claimed Inventor B’s patent application from Inventor A’s original invention. This process will be called a derivation proceeding and, like the prior interference proceeding, will be an administrative proceeding in the Patent Office. However, to obtain a derivation proceeding, Inventor A must show (a) Inventor B’s invention is the same or substantially the same and is not patentably distinct from Inventor A’s invention; (b) the invention was derived from Inventor A; (c) the earlier application was filed without Inventor A’s authorization; and (d) the construction of Inventor A’s claims accurately reflects the true invention. These requirements will make a derivation proceeding somewhat difficult to obtain.
Due to this change in the patent law, it is advisable that inventors apply for a patent earlier than under the prior first-to-invent system, as an inventor may forgo any possibility of obtaining a patent on the inventor’s invention if another party files a patent application on the invention first.
Please feel free to contact Derek Prestin, who prepared this article, or an attorney within the Business Transactions Practice Group of Ruder Ware if you need assistance or have any questions in regard to this article.
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