First to File Patent Systems

First to File Patent Systems
How the New U.S. System Compares to other
Systems Around the World
What is a “First to File” System?
 Simple and Efficient
 Clear Rights
 Innovation
 Rights Granted to First Filer, not First Inventor
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Why have a First to File System?
 Innovation Disclosed Faster
 Makes Rights Clearer
 Encourages Quick and Frequent Filing
 Downsides
 Concerns regarding Small Businesses
 Blocking Patents
The AIA requires a report from the SBA on the effects on small business of
eliminating dates of invention in patent applications.
The Old U.S. System: First-to-Invent
 United States: The Last Hold Out
 First-to-Invent: Earliest Inventor gets the Patent
 Interference Procedures
 Grace Period
 Proof Issues
Congressional Goals for the AIA
 Two Major Goals for First-Inventor-to-File Provision
(1) Inventor Certainty in Rights
(2) International Patent Harmonization
The New System: First-Inventor-to-File
 Patent Reform Enacted: September 16, 2011
 First-Inventor -to-File Provisions Effective: March 16, 2013
 While there will no longer be interference proceedings
available, the AIA still ensures that only actual inventors
are eligible to file an application through derivation
proceedings – which look to determine whether an earlier
filing derived the invention from the later-filing actual
 Key Changes
 First-Inventor-to-File
 Removal of Interference Proceedings
 Derivation Proceedings
 Grace Period Retained
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AIA: First-Inventor-to-File
35 U.S.C. § 100(i)(1)
The term “effective filing date” for a claimed invention
in a patent or application for patent means:
(A) … the actual filing date of the patent or application for the
patent containing a claim to the invention; or
(B) the filing date of the earliest application for which
the patent or application is entitled, as to such invention, to a
right of priority…
Priority Dates and Previous Filings
35 U.S.C. § 119
(a) A patent application filed by a foreign filer in US by any person
who has filed a patent application for the same invention in the filer’s
own country will have the same privileges as an application
originally filed in the United States if that country affords
similar privileges to patent applications originally filed in the
United States.
(e) A patent application filed for an invention disclosed in a
previously filed provisional patent application shall have the same
effect as if it was filed on the date of the provisional application.
Section (e) also makes the ‘best mode’ disclosure requirement optional
instead of mandatory.
Grace Period
35 U.S.C. § 102(b)(1)
A disclosure made 1 year or less before the effective
filing date of a claimed invention shall not be prior art
to the claimed invention if:
(A): The disclosure was made by the inventor or joint inventor
(B): The subject matter disclosed had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor.
Derivation Proceedings
35 U.S.C. § 135(a)
An applicant for patent may file a petition to institute a
derivation proceeding in the Office. The petition shall set
forth with particularity the basis for finding that an
inventor named in an earlier application derived the
claimed invention from an inventor named in the
petitioner’s application and, without authorization, the
earlier application claiming such invention was filed.
 Must Request Within 1 Year of Publication
 USPTO Director Decides to Institute
Comparing the AIA with Other First-to-File Systems
 Europe: EPC
 Germany
 United Kingdom
 Asia
 Korea
 Japan
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The German System
Section 6: If two or more persons made an invention independently of each
other, the right shall belong to the person who is the first to file an application
with the Patent Office.
 First to File
Model System for Europe
Competitive Edge
 Limited Grace Period
 Art. 55 of the EPC: Six month grace period if:
(a): an evident abuse in relation to the applicant or his legal predecessor, or
(b): the fact that the applicant or his legal predecessor has displayed the
invention at an official, or officially recognized, international exhibition falling
within the terms of the Convention on international exhibitions signed at Paris
on 22 November 1928 and last revised on 30 November 1972.
The UK System
“The true and first inventor is not necessarily the first discoverer of
the invention. If it had been discovered by another, but the discovery had
never been divulged, he who independently discovers the same thing, and
is the first to disclose it or to apply for a patent, which is eventually
granted, is the true and first inventor.” - Edmunds on Patents, 2ed, 1897.
 “True and First Inventor” System
Patent Rights Tied to Disclosure
Patent Application Satisfies Disclosure
 Same Day Applicants Proceed Independently
EPC Part C, Chapter IV-24, Section 7.4:
“Should two applications of the same effective date be received from
two different applicants, each must be allowed to proceed as though
the other did not exist.”
 Limited Grace Period
Art. 55 EPC
The Japanese System
Article 39(1): “Where two or more patent applications relating to
the same invention are filed on different dates, only the first
applicant may obtain a patent for the invention”
 Japanese First-To-File System
 First Applicant Gets Rights
 Same Day Applicants Must Agree on Rights
 Examination on Request Only
 6 Month Grace Period
 Limited Disclosure
The Korean System
Article 36(1) Where two or more applications relating to the same invention are
filed on different dates, only the applicant filing the application having the
earlier filing date may obtain a patent for the invention.
 First to File System
 Goal of Korean Patent Act: Promote Industrial Advancement
 Later Filers Barred
 Limited Grace Period
 Six months
Global Patent Law Harmonization
 Main Areas of Disagreement
First to File
Prior Art Treatment
Prosecution/Litigation Differences
Grace Period
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