USPTO Proposed Rules on First-inventor-to-file under the AIA Require Statement regarding Claim to the Benefit of the Filing Date of an Application Filed Prior to March 16, 2013

On July 26, 2012, the United States Patent and Trademark Office issued proposed rules implementing the first-inventor-to-file provisions of the America Invents Act (AIA). These proposed rules will be in effect for any United States Patent Application filed after March 16, 2013. The proposed rules in the Federal Register are available for public comment until October 5, 2012.

Among other things, the Office is proposing additional requirements for nonprovisional applications filed on or after March 16, 2013, that claim the benefit of the filing date of a foreign, provisional, or nonprovisional application filed prior to March 16, 2013. If such a nonprovisional application contains at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect. A statement is also required if the nonprovisional application does not have a claim to a claimed invention that has an effective filing date on or after March 16, 2003 but discloses subject matter not also disclosed in the foreign, provisional, or nonprovisional application.

The Office stated that examination costs will “significantly increase” if the Office must determine on its own the effective filing date of every claim ever presented in an application filed on or after March 16, 2013, that claims priority to or the benefit of a foreign, provisional, or nonprovisional filed prior to March 16, 2013.

Please see our earlier post on the implications of this portion of the AIA at http://intellectualip.com/2012/07/23/america-invents-act-aia-effective-filing-date-a-trap-for-the-unwary/.

America Invents Act (AIA) Effective Filing Date: a Trap for the Unwary

Many inventors and businesses believe that they do not need to worry about the “first inventor to file” changes of the AIA until March 16, 2013. Here we show why they need to start worrying about it now.

Section 3 of the America Invents Act (AIA), 35 U.S.C 146, becomes effective on March 16, 2013. However, paragraph (n) of this Section of the AIA contains a particularly hazardous trap in regards to the “effective filing date” of a patent application. The section reads:

(n) EFFECTIVE DATE-

(1) IN GENERAL- Except as othewise provided in this section, the amendments made by this section…shall apply to any application for patent, and to any patent issuing therefrom, that contains or contained at any time —

(A) a claim to a claimed invention that has an effective filing date…that is on or after the effective date described in this paragraph or

(b) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

Let’s try to unpack the text and understand the trap.

First, the simple case – no trap. Smith files a patent application on March 16, 2013. March 16, 2013 is the “effective filing date.”  This is the first such patent application that Smith has filed for the claimed invention. The invention does not claim priority to an earlier-filed patent application. Result: the AIA “first inventor to file” provisions apply. Assuming Smith is the first inventor to file a patent application for the claimed invention, Smith will be entitled to a patent (providing, of course, that the invention is patentable under other provisions, such as novelty and nonobviousness, not successfully challenged under the post-grant review provisions of the AIA, or other possible reasons for unpatentability).

Under the Patent Act of 1952, as amended, in effect through March 15, 2013, a patent applicant could claim priority to a previously-filed patent application, as long as at least one inventor of the current patent application was named in the previously-filed patent application and the current patent application contained a reference to the previously-filed application. If both the effective filing date and the priority date of the current application are before March 16, 2013, the “first to invent” law that most inventors and businesses are familiar with will apply. However, under the AIA, Section 3(n), if even one claim in the current application is not entitled to a filing date before March 16, 2013, all of the claims will be treated under the new “first inventor to file” provisions.

So here is an example of the trap. On August 1, 2012, Smith (thinking that he does not need to worry about the AIA “first inventor to file” changes), files patent application A. Application A contains only one claim, with three elements, (a), (b), and (c). Elements (a) and (b) are thoroughly described in the patent application, but the description of element (c) is not very good. Smith plans to do some more experimentation on element (c). Patent application A receives an effective filing date of August 1, 2012. On March 16, 2013, with the experimentation on element (c) complete, Smith files a new patent application B with exactly the same claim with exactly the same elements: (a), (b) and (c). The new patent application B contains a reference under 35 U.S.C. 120 to the previously-filed application, A.

If Smith had filed application B on March 15, 2013, Smith would not have gotten an effective filing date for claim 1 of application B of August 1, 2012, because element (c) was not adequately described in patent application A. But it might not matter. If someone else filed a patent application C before Smith’s filing date, and the other application C was not a statutory bar under 35 U.S.C. 102(b), Smith could “swear behind” the other application C by showing that he, Smith, invented the claimed invention before the filing date of the other application C. Thus, Smith could have taken advantage of the “first to invent” law.

However, when Smith delays only one day, until March 16, 2013, to file application B, he has fallen into the trap. Elements (a) and (b) receive a priority date of August 1, 2012. But element (c)  receives an effective filing date of March 16, 2013 because it was not adequately described in application A.  This puts all of claim 1 (and any other claims) under the “first inventor to file” law. Now, Smith can not “swear behind” application C because “first inventor to file” is in effect. Smith does not get a patent on application B (unless Smith can show by the new “derivation proceedings” that the inventor of application C derived the invention from Smith, or unless Smith and the other inventor were both obligated to assign their patent applications to the same person).

Note also that Smith can’t cure this situation by deleting element (c) of claim 1 before a first Office Action citing application C, because the AIA applies to any patent application that contained at any time a claim with an effective filing date on or after March 16, 2013!

Inventors who file patent applications in the United States need to be aware of this trap. Smith either should have done enough experimentation to support element (c) in patent application A as of August 1, 2012, or Smith should have filed application B as soon as the experimentation on element (c) was complete but before March 16, 2013. The moral of the story is: file early and file often starting now.