The Impact of Patent Reform on Filing Strategy (I)

The new law defining prior art would become effective 18–months from the date of enactment of H.R. 1249.  Patent applications filed after that date would be bound by the new first-to-file rules. The major exception is that old invention-date rules will also apply to any application having a claim having a proper priority filing date of prior to the change-over. 

That date will likely be a filing bonanza, much like the what occurred in the lead-up to the June 8, 1995 change in patent term as shown in the chart below.


Applicants who beat the 1995 deadline were granted given either a patent term of 17 years from issuance or else 20 years from filing, whichever was longer as calculated at issuance. In that scenario, there were very good reasons to file before the deadline.

When the new deadline comes, I suspect that the current regime will look more favorable than the new because of the new limits on swearing-behind prior art based upon a prior invention date and claiming a grace period for third-party disclosures. One reason an applicant might delay is because of the new “micro-entity” status that offers lower fees, but even then the best course of action would be to file a provisional application early followed by non-provisional at the lower fee.

Are there reasons why a patent applicant would choose to delay filing an application until after the new deadline?

40 thoughts on “The Impact of Patent Reform on Filing Strategy (I)

  1. 40

    Don’t you need to establish the proper date before you do any search?

    No, and there are very good reasons not to. For one, the applicant may drop a priority claim, and the MPEP strongly suggests that there should only be one search. Opening your initial search window for the additional year makes really good sense.

    The best approach is to do a search based on the filing date, rather than the claimed priority date. If the search turns up a good reference that precedes the claimed priority date is found, then no analysis of the priority document is needed. The priority document needs to be analyzed only in t reference that falls between the claimed priority date and the application date.

  2. 39

    Cheryl, the good examiner treats the provisional like the parent of a CIP. He initially ignores it. He finds prior art before the filing date of the application and lets the applicant demonstrate support in the provisional to move the effective filing date back.

  3. 38

    If the provisional fails to provide 112P1 support for claims, the provisional does not currently (and will not in the future) “buy one year extra patent term.”

  4. 37

    Don’t you need to establish the proper date before you do any search?

    There is plenty of reason to “bother.”

  5. 36

    Don’t know if any examiner ever actually did that.

    Don’t see why they would bother, unless the only good art they found depended on the priority claim being defective.

  6. 35

    Are they going to be examining provisional for §112?
    The examiner could have always looked at the regular application and asked if there was enough information in the provisional to have the earlier date. Don’t know if any examiner ever actually did that.

  7. 34

    Regarding systematic IP hacking by China:

    You really thing that you can get discovery in China? Really?

    Then we have the matter that the later US applicant will be denied a patent over the earlier Chinese (language) patent application. If the US applicant cannot simply swear that he invented first and that be sufficient as it is now, he loses.

    The authors of the new statute assumed an idealistic world were everywhere else was just like the United States. They were and are wrong.

  8. 33

    Well, the text of 102(f) is repealed (though you can infer it from other parts of the new statute).

    The problem is that the procedural parts of the Patent Act (35 U.S.C. §§ 23 and 24) are not amended. So if an applicant is confronted with prior art, and believes that that prior art is a derivation, there’s no way to get discovery to prove it.

  9. 30

    Totally agree with you David that there’ll be a “filing frenzy” for 18 months after the AIA is enacted. And with the fee diversion provision effectively “watered down,” the backlog at the USPTO will only grow percipitously larger.

  10. 29

    Well, there is no doubt the bill’s main sponsors went out of their way to protect trade secret use. But it my understanding that the Supreme Court will not hold a statute unconstitutional if it can be construed in a manner to keep it constitutional. That is why I think “on sale” will not be interpreted in the say the two senators and two congressmen suggested.

    Did anyone, anyone even suggest to the good gentlemen from Congress that allowing patents on trade secret use beyond a grace period had been “held” to be unconstitutional in Pennock?

    I wonder if they simply dismissed such talk as political propaganda. The reason I say this is that in the floor debates in the House, so many from the patent reform cabal argued that America started as a first to file country. Now that was so off the wall and wrong, that I have to wonder just who these folks listened to and why.

  11. 28

    Ne, I agree with you that metallizing Engineering is a constitutional requirement. However, Sens. Hatch and Leahy in their colloquy, repeated by Reps. Smith and Bass, stated that they intended repeal of Metallizing Engineering.

    So, either the ambiguous language has to be interpreted consistent with Pennock v Dialogue, or inconsistent with the legislative history. And if interpreted adversely to Leahy/htch, then much of the quid pro quo fabric of the new statute comes apart.

    This bill will be great for litigators for about 20 years, but disruptive for everyone else. This bill is the last nail in the coffin marking the end of “The American Century.”

  12. 27

    You know what really amazes me… I was taught in the Search that had 3 Drawings for each that Tani even though in Japanese, had a few lines describing how it was made and what it used. AIR! The I am lambasted up and down because I reiterate what I read. And then I believe I am the laughing stock.. LAUGH AT THIS
    So now I wonder what happened to Samuel Samuels.. I really don’t wonder how it happened. That is elementary.He was in such a hurry he took both up together. What he stole and the crumbs. Samuel Samuels says it all.
    Why can’t I have second or third chair? JUST FOR LAUGHS!

  13. 24

    If you are short of money for a patent
    There are inventors who hope to pay the government fees for a patent only after their inventions are sold out.
    There are inventors who are individuals and could not afford the high amount of the government fees although there are some discounts or tradeoffs.
    Yet the government bureau often revokes a patent application or a patent and bring an end to the applicant or patentee. This is too strict a rule which has ruled out many inventors’ dreams.
    Once the law will make some slight modifications, things might be quite different.

    If a patent application is filed and the filing fees are paid, it could be revoked but not terminated within the period of its life, say, 10 or 20 years from the filing date.
    If a patent is granted, it could be revoked but not terminated.
    In turn, the appicant or patentee should give a step back. His intellectual rights are not protected during the period being revoked. Anyone may utilize the invention during that period without paying the roylty fees at any time.

    For example, if an inventor has filed an application and paid the filing fees, but he failed to pay the annual fees for 3 years, then the application is revoked, anyone may utilize the invention freely during those 3 years and do not have to pay anything even after the patent is granted.
    If the inventor has sold out his invention during the 7th annual period, he may ask for an eaxamination and pay the examination fees plus the 7th annual fees. And the 7th annual period shall be protected.
    Same for a patent granted.
    If the patent tends to not sell well during the 9th annual period, the patentee may not pay the 9th annual fees and the patent is not protected during the 9th annual period.
    If a patent tends to sell well during the 10th annual period, the patentee may pay the 10th annual fees and the patent is protected during the 10th annual period.

    For a PCT application, things are somewhat different. If a national application is filed and the filing fees paid, the applicant may file a PCT at anytime and enter the national phase of a country at anytime. He may wait until he has sold out his invention.

    All these modifications should be in effect for the past patent applications or patents. Because many inventors have been obliged to give up their rights plus their dreams. The laws revised should give them a chance to take the advantage of their inventions.

  14. 23

    It is not clear the new “on sale” will not be interpreted as the old “on sale” given Pennock v. Diaglogue. There, in my opinion, the Supreme Court was very clear that it was beyond the power of Congress to authorize extended trade secret use and still allow the inventor to obtain a patent. While we have had some debates here on this topic, I do not think that Pennock can be construed in any other way.

  15. 22

    One more huge change in filing behavior —

    Under today’s law, you can file any old document as a provisional application, because just about anything is helpful as evidence to show conception, possession, and diligence.

    Under the new law, these three things are irrelevant. The only event that counts to establish a date is an application that meets § 112 ¶ 1. Every application, to have any value, has to be prepared with the full care of a non-provisional.

    Thus, use of provisionals will essentially end, except to buy one year extra patent term.

  16. 20

    It looks like 20-30,000 applications were filed to beat the June 8, 1995 GATT date?

    Trivial compared to what’s coming next. The filings for this transition event will be many times the 1995 transition. For every application you have pending on the day before the effective date (March or April 2013), you will have to file all continuations you ever intend to file before the effective date, to get the old priority rules. That is, every restriction requirement outstanding, where you pick off the species one by one? You can’t do that — it’ll be use it or lose it. That’ll be several hundred thousand applications.

    Somebody said that this bill was about reducing backlog. Those folks weren’t looking at the transition provisions.

    A Satan Sandwich — without the sugar coating.

  17. 19

    There are a several classes of invention that are currently barred but that will become patentable under the new law.

    Because the bill repeals the “secret commercial use” bar of Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 520, 68 USPQ 54, 58 (2d Cir. 1946). Also, the bill repeals the “on sale” and “public use” bar for products that can’t be easily reverse engineered. Thus, if a company has been holding a trade secret, that invention will be patentable. (But since patents are so devalued by the bill, and the risk for holding a trade secret is so reduced, I doubt that many such patents will be filed.)

    Inventions that can be disclosed in a way that meets enablement and written description while withholding best mode will be filed after the effective date.

  18. 18

    No, it’s weaker: whereas now you only need to swear behind a reference to establish an earlier date of invention, under the new regime you’ll need to to that AND prove that someone else derived from you. Lots of luck with the latter.

  19. 17

    f you really want to stop this trash heap from becoming the law of the land, call your congressmen and women immediately.

    Yes, because calls from actual concerned citizens really do matter to those stuffing their coffers with special interest, um, enticements.

    Hey look, a snipe – let’s go snipe hunting…

  20. 16

    Are you certain, Dennis?

    The way I’m reading the House version is that Kappos will have UP TO 1-year’s time from enactment to promulgate rules, procedures, and the fee amount (so it could be mere months; not a full year) … and that PGR can thereafter be instituted against ANY patent issued AFTER the bill was signed by the President.

    This is of course measurably worse than what you’re saying, as up to perhaps 1,000 or more additional patents would be ensnared in PGR (and one can only imagine the TRUE nightmare in store for the those among the initial wave of “PGR guinea pigs”).

    But it’s not too late.

    If you really want to stop this trash heap from becoming the law of the land, call your congressmen and women immediately.

  21. 15

    Paul, if Econ-Net is any example of how a troll operates, the goal is to stay out of litigation, or if sued, to settle out. Such trolls never want to go to trial.

    Since the troll, as I understand the term, is always operating in bad faith and is never licensing/enforcing in good faith, a few extra lies here and there are no obstacle.

    The PTO needs to expect the troll and to require some proof that makes it more likely than not that the earlier prior art, developed by legitimate developers of technology, derived from the troll/affiant so they are not defrauded by a derivation affidavit filed in bad faith.

  22. 14

    Just as now, that would require someone committing purjury at least three times: on their application inventorship oath, on their declaration to overcome the prior art, and in any litigation to try and enforce the patent. How likely is that to be done, or be successful?

  23. 13

    Does anyone see a potential problem with China and others systematically hacking US government, corporate and law firm IP when combined with first to file?

  24. 12

    Agreed. I would be incredulous if the PTO accepted an affidavit that any reference was derived from an inventor without reliable proof that he invented it first.

    Thus, we will come full circle. The new derivation affidavit will be the same as the old 131 affidavit.

  25. 10

    PGR = Post Grant Review

    The new post grant review system is scheduled to become effective 1-year after enactment of the law and will apply to all patents issued after that date. Some applicants are now reviewing their patent porfolios to determine whether they should push pending applications through to issuance immediately even if that means giving up desired claim scope. That “pushing-through” process would likely take at least nine months.

  26. 9

    Love it, indeed!

    So, I see others enter the market with a new product, or with a published idea of what new products will be. I quickly cobble together a patent application describing and claiming what is now in the public domian. I file it. When I am met with inevitable prior art reject, I file an affidavit swearing everyone else derived from me.

    I get the patent. I am now a major troll, am I not? People trying to tell whether my patent is invalid will have to know whether, in fact, the originators were just that and not derivers.

    We are in for a ride.

    At least if I tried to assert prior invention in a 131 affidavit, I would have to offer some reliable proof. The new statute, or it at least the way it is proposed to be implemented, does not seem to require that if Paul is right.

  27. 8


    How that will be “proved” will of course depend on the enabling PTO rule-making. But my [very informal] understanding is that the PTO will probably not normally challenge an applicants assertion [declaration?] that the third party disclosure is a disclosure derived from the applicants [assuming it is not a bar date prior art disclosure]. [After all, look at how relatively few Rule 131 declarations are challenged by the PTO now, even those clearly legally defective on their face, such as bare conception dates without any dilligence or actual reduction to practice proofs.]

  28. 7

    If the third party disclosure is a disclosure of the subject inventors invention, will not the new statute still allow the inventors to show that?

    Paul, my understanding is that the statute does allow that; the issue though, is how does the applicant prove it to the satisfaction of the PTO?

  29. 6

    Good topic.
    “First inventor to file” is not nearly as significant to getting an ENFORCABLE patent as the expansion of prior art will be from the elimination in the new 102 of “in the U.S.” to prior art which is presently so limited.

    Question re: “swearing-behind prior art based upon a prior invention date AND claiming a grace period for third-party disclosures” I assume PRIOR third party disclosures is meant, since others would not be prior art? What other ways of “claiming a grace period for third-party prior disclosures” is there OTHER than by Rule 131 declarations [few of which survive in litigation]? If the third party disclosure is a disclosure of the subject inventors invention, will not the new statute still allow the inventors to show that?

  30. 5

    Yes, it is something other. Lawyers, even more than all others, are cautious to the point of doing things “just in case”. Good so. That’s what they are paid for.

    Drink the foul-tasting FItF medicine. It might surprise you how much good it does you.

  31. 4

    Well, if the sentiment of this board is that patent applicants will want to beat the deadline to be under the old rules than the new, is that anything other than a resounding statement that the legislation is anti-patentee???

  32. 3

    “Are there reasons why a patent applicant would choose to delay filing an application until after the new deadline?”

    Yes. He hasn’t provided sufficient written description or enabled an otherwise not enabled invention.

  33. 2

    Great question Dennis. I can’t think of any reason to delay filing except the one you have given, which strikes me as puny. I can well imagine widespread feelings that rights will be irrevocably lost, if the app is not filed till after FItF day. So, an unholy scramble and filing peak looks now to be pre-ordained

    Of course, once FItF is up and running, there is a very good reason to delay filing.

    With FI tF Applicant gets one shot at acquiring exclusive rights. Filing prematurely, without an enabling disclosure over the width of the claim, will result in a later-filing but more thoughtful competitor having freedom to practice, and quite likely a valid enforceable patent as well. FItF really punishes those who file speculatively, without adequate disclosure in the app as filed.

  34. 1

    Maybe of they expect a interference under the old rules…???

    How does PGR work? Does the new PGR rule apply to anything granted after the date no matter when filed?

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