The Senate is today considering the Patent Reform Act of 2011, with the proviso that the legislation is now being termed the “America Invents Act of 2011.” A major element of the bill would eliminate first-to-invent rights and also eliminate any pre-filing grace period except for inventor-derived disclosures (and post-inventor disclosure disclosures). In several ways, the legal reforms would move US law closer to the rest-of-the-world (ROW) by primarily basing patent rights on the date that a patent application is filed rather than the date of invention.
Anti-Harmonization: In noting a major deficiency in the bill, Hal Wegner has expressed concern that the unfortunate end result is anti-harmonization. The particular concern is the question of when “secret” prior art (today termed 102(e) prior art) is available for obviousness (or inventive step) analysis.
In the European and proposed US first-to-file system, when two individuals independently make the same advance, only the first-inventor-to-file the patent application will receive a patent on that invention. However, it is actually quite rare that the second-filed application’s claim set will be entirely anticipated by the previously filed disclosure. The big question then is not novelty, but rather obviousness (or inventive step) – do the claims in the second-filed application present an inventive step over the prior art? In Europe and the ROW, the first-filed patent application can only be used for novelty analysis and is not applied to the question of obviousness unless that first-filed application was otherwise published. Under the new US bill, however, these unpublished, secret filings would be used both for novelty and obviousness grounds.
An Example: To be clear, the issue arises when Inventor-A files a patent application and then, a few months later, Inventor-B files a patent application claiming a similar (but different) invention. It is usually the case that (1) Inventor-A will not immediately publicize its invention and (2) the first-filed application will not be published until 18-months after its filing. Under the proposed system, Inventor-B’s patent could be blocked on obviousness grounds based on Inventor-A’s application. In Europe and Japan, however, the earlier filed application would not be used in the obviousness (inventive step) analysis unless published prior to Inventor-B’s application date.
Thus, under our current invention-date-focused system, some inventions are patentable in the US that would not be patentable in Europe and Japan. On the flip-side, once the bill is passed, there will be a new set of inventions that are patentable in Europe and Japan, but not patentable in the US.
Importance: This issue turns out to be important in a fairly large number of cases. In a recent study, I found that, on average, US patents cite to about 5.5 references that conform to this situation – i.e., the average patent in my study cited to 5.5 other patent applications that were on-file prior to the filing of the patent application under examination but were not published until afterwards. The legal question for examiners is whether those references should be considered only for novelty grounds or if obviousness should be a consideration as well.
I do not know the answer to the question of whether the proposed US system is better or worse than the current European system. I do know, however, is that the US proposal does not harmonize those laws and may tend to frustrate US applicants by offering a lower bar to patentability in Europe than in their home country.
A Framework for Analysis: The Supreme Court’s 2007 decision in KSR v. Teleflex offers one framework for analysis. That case talked about a common sense approach to obviousness analysis – both in choosing prior art references to consider and in applying those references against the proposed invention. The common sense framework suggests that we not consider prior art references that could not have been accessible to someone of ordinary skill in the art. In this situation, these previously-filed applications were, by definition, kept secret within the Patent Office and not published elsewhere. Under those conditions, a common sense approach would exclude those when determining the level of ordinary skill in the art.
If the fix is to eliminate this secret prior art from obviousness analysis, the solution is a simple three-line amendment to the proposed legislation.