12 years ago

For over 200 years the American patent system rewarded the first inventor – the first person or persons to make an invention.  If a person conceived an invention and subsequently worked diligently to perfect it, either physically or by filing a patent application, then that person would prevail over someone who later had the same idea but who perfected it before the person who was first with the concept.

This system permitted the person first conceiving the invention who got to the Patent Office with the patent application more slowly than a competitor – because of testing the concept more broadly, or more rigorously with tests requiring more time to complete, or because of writing a longer patent application – to nonetheless prevail, provided that they were diligent in their efforts to perfect the invention specified in their patent application.

That system changed March 16, 2013, under the provisions of the America Invents Act (AIA) coming into effect on that date.

For new invention patent applications filed on and after that date, the inventor who prevails is simply the one who files their patent application first, regardless of who had the idea first.  

It is now, simply stated, a race to the Patent Office.

This article addresses some strategic issues for winning that race.

Remaining Mindful of Changes in the Prior Art Universe

The AIA provisions taking effect on March 16, 2013 eliminated various restrictions previously applied to “prior art” – the state of the art against which an invention is judged to determine whether it meets the statutory patentability requirements of novelty and non-obviousness. 

Under these AIA provisions, anything available to the public anywhere in the world prior to the time of filing a patent application is prior art. There is an exception for public disclosures deriving from the inventor that are made within one year of the U.S. patent application filing date, but such pre-filing disclosures will still have the result of preventing patents from being obtained in many foreign countries.

It therefore is necessary to scrutinize every pre-filing activity by an inventor to determine whether such activity has made the invention, wholly or partially, publicly available, and to preemptively dissuade the inventor from conducting any such activity before the patent application is filed. 

Even in a situation in which only U.S. patent rights are of interest, reliance on the one year “grace period” of 35 U.S.C. §102(b)(1) is a risky proposition, since a subsequent third-party publication of an obvious variant of the invention, before the inventor files, can fatally impact the patent prospects.

Further, in assessing patentability under the new law, the expanded scope of prior art includes consideration of relevant published U.S. or international (PCT) patent applications that have a foreign priority date, and which as a result of the abolition of the so-called Hilmer doctrine, now have status as a writer art as of their foreign priority date.

Identifying the Applicable Law and Coordinating the Patent Claims

The new patent regime requires that particular attention be given to any “effective date tail” of an application claiming priority to earlier U.S. application(s) filed before March 16, 2013.

For U.S. patent applications that are currently filed with a priority claim to a U.S. application filed before March 16, 2013, the effective date applicable to the claims will determine whether the application is processed under the “old law” prior art/first to invent provisions or whether the new AIA prior art/first to file provisions will govern the proceedings. 

The U.S. Patent and Trademark Office published rules and guidelines on February 14, 2013 addressing this determination, according to which a patent application disclosing and claiming only subject matter that was properly enabled and supported in a priority application filed before March 16, 2013 will be governed by the old law.

If, however, the patent application filed after March 16, 2013 claims priority to a U.S. application filed before March 16, 2013 and at any time during its processing, contains a claim having an effective date on or after March 16, 2013, then the entire application is governed by the new first to file law, even if the post-March 16, 2013 claims are subsequently cancelled.

This underscores the need to avoid “mixing” pre-March 16, 2013 and post-March 16, 2013 claims in the same application, and to ensuring that there is adequate support under 35 U.S.C. 112 in pre-March 16, 2013 priority applications for claims presented after March 16, 2013 that are intended to take advantage of the old law.

Maintaining an Effective Action Plan for Invention Assessment and U.S. Patent Filing

Every new invention considered for U.S. patenting now faces a “race to the Patent Office” in relation to competitors pursuing the same or related technology, and must be judged against an increased scope of prior art arising from new products, publications, and activities around the globe. 

In this new world, time is of critical essence in establishing patent positions. This fact should always be in mind in designing experiments, testing prototypes, conducting development efforts, assessing commercial viability, and carrying out other actions that may precede patent filings, so that resources are efficiently deployed to facilitate quick filing.

Filing of provisional, as opposed to non-provisional, U.S. patent applications is warranted where there is a high likelihood that an invention will undergo significant modification as it is refined and productized for commercialization during the year following initial patent application filing. Successive provisional filings then can be made during the one year period, to capture successive modifications at the earliest possible time, and ultimately all provisional application priorities can be claimed in the corresponding non-provisional application that is filed on or before the 1 year anniversary of the first provisional application filing date. 

If there is a high probability that a number of related innovations will be generated in an R&D effort, it may be advantageous to prepare templated shell documents for patent applications that can be quickly filed after “drop-in” of empirical procedures and results, with summary description and claims.

The “need for speed” requires patent counsel to rapidly grasp the inventive concept and inductively broaden it as appropriate, to hypothesize extensions, extrapolations, and alternative applications and embodiments, and to competitively capture the broad scope of the invention, with fall-back positions against unknown prior art that may surface in the future, in preparing a patent application that is rushed to the Patent Office.

As a result of the “world-wide public availability” standard for prior art under the AIA, and the abolition of the Hilmer doctrine, correspondingly broader information searches are necessary to assess patentability in the first instance.

In such expanded prior art universe, information concerning current world-wide activity and developments, in sources such as trade magazines, corporate and academic newsletters, promotional brochures, sales literature, online clinical trials databases, research bulletins, information releases, industry white papers, competitive intelligence, research grant requests for proposals (RFPs), podcasts, etc., assume larger importance, as potential reservoirs of applicable prior art.

Organizational response to such expansion of prior art is properly addressed by generating awareness of the challenge, so that technologists are sensitive to the critical task of continually gathering and communicating current information from the journals they read and the technical meetings they attend, so that sales representatives and marketing personnel are motivated to immediately report on competitive developments and products of which they become aware, and so that managers can ensure successful flow of such information within the organizational ranks.

In the post-March 16, 2013 patent world, swift execution of invention assessment and patent filing is essential, and while speed alone is not determinative of ultimate success in every instance, it is a critical element of an increasingly competitive proprietary landscape.

© 2013 Steven J. Hultquist, Hultquist, PLLC