Guest Post By Prof. Ann McCrackin, Stephen Brodsky, and Amrita Chiluwal. Prof. McCrackin is Director of the Patent Prosecution Program at the Univ. of New Hampshire School of Law (formerly Franklin Pierce Law Center). Mr. Brodsky and Ms. Chiluwal are both 2011 JD Candidates at the Univ. of New Hampshire School of Law.
The Patent Reform Act of 2011 ("S.23") is now being considered by the full U.S. Senate. One of the provisions of S.23 would replace the current first-to-invent ("FTI") system with a first-inventor-to-file ("FITF") system. Some of the differences between these two systems are outlined below in order to help understand the changes in Sec. 2 of the S.23 Bill. For simplified illustrative purposes, Parties ("A" and "B") and their invention ("Widget") will be used below.
First-to-Invent
The current U.S. system is a first-to-invent ("FTI") system. Under the FTI system, the first party to invent is entitled a patent on that invention upon filing for a patent application (as long as all of the other patentability requirements are met). Even if the first party to invent is not the first to file, that party could still be entitled to the patent rights. In situations where there are multiple inventors of the same invention, the determination as to who is entitled to the patent rights is made during an interference proceeding. Interference proceedings are administrative proceedings held at the USPTO that legally determine the first inventor. However, there are time constraints on interference proceedings, e.g., typically a party cannot bring an interference proceeding on an invention after a patent has issued on that patent. Therefore, the first person to file would get the patent unless another person is able to prove prior invention in an interference proceeding.
The following examples involve two parties who claim the same invention in an FTI system:
FTI Example 1: A invents a Widget. B also invents a Widget independent of and after A. B files a patent application for this Widget. If A later files a patent application for the Widget, A would have the right to the Widget patent as long as A can prove that he/she invented the Widget before B during an interference proceeding. It does not matter that B filed first or that B invented the Widget independently of A.
FTI Example 2: A invents a Widget. B finds out about A's Widget and files a patent application for this Widget. If A later files a patent application for the Widget, A would have the right to the Widget patent as long as A can prove that he/she invented the Widget before B during an interference proceeding. It does not matter that B filed first.
Thus, in the FTI system, the first party to invent is entitled to the patent rights. In both of the FTI Examples the first party to invent is A, therefore, A gets the patent rights.
First-Inventor-to-File
The S.23 bill would replace the current FTI system with a first-inventor-to-file ("FITF") system. Under the FITF system, the first party to file a patent application on their invention will be entitled to a patent regardless of the actual date of invention (as long as all of the other patentability requirements are met). This is essentially a race system – the first to get to the patent office and file gets the patent rights.
However, unlike most other countries in the world with a first-to-file system, the FITF system proposed in the S.23 bill has an exception for the situation where the first party to file "derived" the invention from the second party to file. If the first party to file "derived" their invention from the second party, then the second party may bring a derivation proceeding. During the derivation proceeding, the USPTO will determine whether the first party derived its invention from the second party. If it is determined that the first party actually derived its invention from the second party (the true inventor), then the second party will be entitled to the patent rights of that invention. Thus, the second party may nonetheless obtain a patent on the invention despite the first party's earlier filing date. Although the term "derived" is not defined in S.23, it is clear that the derivation proceedings will replace interference proceedings if S.23 is passed (S.23 replaces the current section 135 of 35 USC on interferences with a new section 135 on derivation proceedings). Therefore, under the FITF system, the first party to file would be entitled to a patent for their invention unless the invention was derived from another party.
The following examples involve two parties who claim the same invention in an FITF system:
FITF Example 1: A invents a Widget. B also invents a Widget independent of and after A. B files a patent application for this Widget. B would have the right to the Widget patent, because B filed a Widget patent application first. It does not matter that B came up with the Widget idea after A as long as B did not derive his/her idea from A.
FITF Example 2: A invents a Widget. B finds out about A's Widget and files a patent application for that Widget. If A later files a patent application for the Widget, A would have the right to the Widget patent as long as he/she can prove that B derived his/her Widget from A's Widget in a derivation proceeding. It does not matter that B filed first.
Thus, in the FITF system, the first party to file is entitled to the patent rights unless the invention was derived from the other party. In the FITF Examples the first party to file is B. B is entitled to the patent rights in Example 1; however, because of the exception for derived patents in S.23, B is not entitled to the patent rights in Example 2. Rather, A gets the patent rights in Example 2.
Comparison of FTI and FITF Examples
By comparing the FTI Example 1 and FITF Example 1 described above, one can see the difference between the two systems when two parties independently invent and file patent applications claiming the same invention. Under an FTI system, A is entitled to the patent rights because A invented first; however, under an FITF system B is entitled to the patent rights because B filed his/her invention first. The FTI and FITF scenarios for Example 1 are illustrated below:
By comparing the FTI Example 2 and the FITF Example 2, one can see the exception in S.23 for the situation where the first party to file is not actually an inventor, but instead "derived" the invention from the second party to file. Because B derived the invention from A in Example 2, B is not entitled to the patent rights in the FITF system even though B filed first. As a result, A is entitled to the patent rights for Example 2 in both an FTI and an FITF system. The FTI and FITF scenarios for Example 2 are also illustrated below:
Current 35 USC 102(a) Compared to S.23 with Respect to Removing Prior Art References Based on Date of Invention
Under the current 35 USC 102(a), if the invention to be patented is "known or used" by anyone other than the applicant, or described in "any" printed publication before the date of the invention the applicant is not given patent rights. However, under the current 37 CFR 1.131, an applicant can swear behind 102(a) prior art to show that the applicant's date of invention was before the existence of the prior art and disqualify or remove the prior art reference. Thus the focus of the current §102(a) is on the date the applicant invented the subject matter.
102(a) Example 1 (Current Law): A invents a Widget on January 1, 2000. B also independently invents the Widget on March 1, 2000 and publishes an article describing his Widget on March 2, 2000. A files a patent application on the Widget on January 1, 2001. Under the current law, A may swear behind B's article to establish A's earlier date of invention. Because A's date of invention is prior to the date of the published article, A can obtain the patent rights.
In contrast, the proposed S.23 does not have provisions equivalent to the current §102(a) because the date that A invented the subject matter no longer matters. Prior art is considered relative to the filing date of A's patent application. Thus, under the proposed S.23 an inventor is not afforded an opportunity to overcome a prior art reference by establishing an earlier invention date.
102(a) Example 1 (S.23): A invents a Widget on January 1, 2000. B also independently invents the Widget on March 1, 2000 and publishes an article describing his Widget on March 2, 2000. A files a patent application on the Widget on January 1, 2001. Under the proposed S.23, A cannot swear behind B's article to establish A's earlier date of invention because B disclosed the Widget prior to A's filing date for the patent application. Even though A has an earlier date of invention, A cannot overcome the article as a prior art reference and cannot obtain the patent rights.
Thus, in the FITF system under the proposed S.23, an applicant cannot swear behind a prior art reference when the applicant has an earlier date of invention. In the 102(a) examples, A can get the patent under the current law because A can swear behind the reference; however, A cannot get the patent under the proposed S.23. The 102(a) Example 1 Scenarios are illustrated below:
Current 35 USC 102(b) Compared to S.23 with Respect to One-Year Grace Period For Filing Following a Disclosure
The current 35 USC 102(b) provides an applicant with a grace period for filing a patent application regardless of disclosures made by the applicant or others during the one-year period prior to filing the patent application. Thus the focus of the current §102(b) is on the date the applicant filed a patent application rather than the date of the applicant's invention. For example, currently under §102 (b), if an invention is disclosed in "any" printed publication by the applicant or others, less than one year before the filing date of a patent application for the invention, the applicant may still obtain a patent. Similarly, if the invention has been in "public use" or "on sale" less than one year before the filing date, the applicant may still obtain a patent.
102(b) Example 1 (Current Law—prior disclosure by inventor): A invents a Widget on January 1, 2000. A publishes an article describing the Widget in a journal on March 1, 2000. A files a patent application on the Widget on January 1, 2001. Under the current law, A is not barred from getting the patent because there is a grace period for disclosures made within one year of the filing date of the patent application.
102(b) Example 2 (Current Law—prior disclosure by others obtained directly or indirectly from inventor): A invents a Widget on January 1, 2000. B learns about the Widget from A and publishes a journal article describing the Widget on April 1, 2000. A files a patent application on the Widget on January 1, 2001. A is not barred from getting the patent because the one-year grace period for filing an application applies to any public disclosure regardless of who made the disclosure.
102(b) Example 3 (Current Law—prior disclosure by others): A invents a Widget on January 1, 2000. B invents the Widget independently on March 1, 2000. B publishes a journal article describing the Widget on April 1, 2000. A files a patent application on the Widget on January 1, 2001. B files a patent application on the Widget on February 1, 2001. A is not barred from getting the patent, even though B disclosed the Widget before A's filing date, because the one-year grace period applies to disclosures of others. Also, because A invented the Widget first, B would not be entitled to any Widget patent rights.
In contrast, under the proposed S.23 bill, the one-year grace period is only available for disclosures made by the inventor or by another who obtained the subject matter directly or indirectly from the inventor (see 35 USC 102(b)(1) & (2) of S.23). Thus, under the proposed S.23, if the inventor or someone who obtained the invention from the inventor publicly discloses the invention less than a year before the inventor files an application, the invention can still be patented. However, a public disclosure made by anyone else before the inventor files an application will prevent the inventor from obtaining a patent unless the disclosure is subsequent to the disclosure by the inventor or someone who obtained the invention from the inventor.
102(b) Example 1 (S.23—prior disclosure by inventor): A invents a Widget on January 1, 2000. A publishes an article describing the Widget in a journal on March 1, 2000. A files a patent application on the Widget on January 1, 2001. Under the proposed S.23, A is not barred from getting the patent because there is still a grace period for disclosures made by the inventor within one year of the filing date of the patent application.
102(b) Example 2 (S.23—prior disclosure by others obtained directly or indirectly from inventor): A invents a Widget on January 1, 2000. B learns about the Widget from A, and publishes a journal article describing the Widget on April 1, 2000. A files a patent application on the Widget on January 1, 2001. Under the proposed S.23, A is not barred from getting the patent because the one-year grace period also still applies to disclosures by others who obtained the information either directly or indirectly from the inventor.
102(b) Example 3 (S.23—prior disclosure by others): A invents a Widget on January 1, 2000. B independently invents the Widget on March 1, 2000 and publishes an article describing the Widget on April 1, 2000. A files for a Widget patent on January 1, 2001. B files a patent application on the Widget on February 1, 2001. Under the proposed S.23, A is barred from getting the patent because the Widget was disclosed by B before A's filing date and B did not obtain the information disclosed from A (either directly or indirectly). Interestingly, although A's application is a disclosure, A's application is not prior art against B's application because B publicly disclosed the Widget before A's filing. Therefore, B would be entitled to the Widget patent.
Comparison of the 102(b) Examples
Under both the current law and S.23, a disclosure made by the inventor or by another who obtained the subject matter from the inventor, will not bar the patent application as long as the application is filed within one year of the disclosure. In the 102(b) Example 1 and 102(b) Example 2 for both the current law and S.23, A can get a patent because A's patent application is filed within the one-year grace period. The scenarios for a prior disclosure by the inventor or by another who obtained the invention from the inventor are illustrated below:
However, S.23 differs from the current law when the first public disclosure is made by a party other than the inventor or someone who obtained the invention from the inventor. Under S.23 such a disclosure prevents the inventor from filing a patent application. In the 102(b) Example 3, A can get the patent rights under the current law, but A is barred by B's prior disclosure under S.23. The scenario for a prior art disclosure by others is illustrated below: 