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Expanding universe of “prior art”: Patent applications will be more vulnerable to attack if filed after March 16, 2013

Monday, January 21, 2013

Article by Bruce S. Itchkawitz, Ph.D.; originally published at www.PhotonicsPatents.com on January 20, 2013

U.S. patent law is scheduled to soon experience major changes under the America Invents Act (AIA) that will make it harder to get a patent granted and that will make it easier to challenge an issued patent.  Therefore, if contemplating filing a patent application in the near future, it's wise for applicants to do so before March 16, 2013, the day these changes take effect.

One major change is that the "prior art" universe is expanding on March 16, 2013.  "Prior art" is the term used for references or activities that can be cited against the patentability of a patent application or the validity of an issued patent.  Under current law, for a sale, offer for sale, or public use of a product to qualify as "prior art," this activity had to (i) occur in the U.S. and (ii) be earlier than one year before the patent application's filing date.  Under the new law, being on sale or in public use anywhere in the world can be cited.

In addition, under current law, for a foreign patent application to qualify as "prior art" against your U.S. patent application, it has to satisfy at least one of the following conditions:

  1. published before your conception date,
  2. published more than one year before your filing date, or
  3. filed before your conception date as an international patent application under the Patent Cooperation Treaty ("a PCT application"), that was published in English, designated the U.S., and resulted in a granted patent.

Under the new law, conditions (1) and (3) of the current law disappear since the conception date no longer matters (as discussed below).  Condition (2) of the current law excludes all foreign patent applications that published less than one year before your filing date, but under the new law, condition (2) is modified to only exclude foreign patent applications by the inventors (or obtained from the inventors) that are published less than one year before your filing date. 

A second major change in U.S. patent law, receiving the bulk of the buzz regarding the new law, is that the U.S. is changing from a "first to invent" standard to a "first to file" standard.  It's always been beneficial to file patent applications as soon as possible, but under the old "first to invent" standard, even if you filed your patent application after someone else did for the same invention, you could be awarded the patent instead of them by proving that you were the "first to invent," i.e., you invented the claimed invention before they did.  However, under the new "first to file" standard, the first party filing their patent application is awarded the patent, regardless of who was the "first to invent."  

(Rigorously speaking, the new law is actually a "first inventor to file" standard, since it prevents someone from obtaining the invention from the inventors, and then racing to the patent office to file an application first for something this someone didn't actually invent.)

It's rare that two entities separately conceive and file patent applications for the same invention.  But this change to a "first to file" standard makes an important contribution that further expands the "prior art" universe.  Under the current "first to invent" standard, the date that you conceived of the claimed invention could be used to exclude a certain category of references that were available to the public before your filing date from being considered "prior art" against your patent application.  But under the "first to file" standard, applicants can no longer rely on their earlier date of conceiving the claimed invention to overcome any cited references.  In other words, conception date will no longer matter; only the application's filing date will control.

Besides expanding the "prior art" universe, the new law also introduces a new "post-grant review" (PGR) mechanism for challenging the validity of U.S. patents within nine months of issuance before the Patent Trial and Appeal Board.  This mechanism became available to challenge so-called "business method" patents in September 2012, but on March 16, 2013, it will be available to challenge all U.S. patents with filing dates after this date.  In conjunction with the other mechanisms for challenging issued patents (e.g., ex parte reexamination and inter partes review), each with its own requirements and pros and cons, PGR opens up a new way for competitors to invalidate your patent.

Finally, the new law includes language that has not yet been interpreted by the federal courts, so the full effects of the new law are uncertain at present. 

For one example, with regard to the activities anywhere in the world being "prior art," as discussed above, the new law states that the application can be rejected if the claimed invention is "in public use, on sale, or otherwise available to the public" before the application's filing date.  So does "otherwise available to the public" mean that a private sale of the invention would not qualify as "prior art" under the new law?  Under existing law, any sale or offer for sale in the U.S.would qualify as "prior art," public or private.  Until the courts weigh in, it's probably prudent to make the conservative assumption that any sales or offers for sale, public or private, would qualify as "prior art" and to strive to not enter into such activity unless a patent application is already on file.

For another example, the new law excludes "disclosures" made by the inventors (or obtained from the inventors) within one year before the application's filing date from being considered as "prior art" against the application.  But are being "on sale" or "in public use" considered to be "disclosures" under the new law?  Under existing law, sales, offers for sale, and public uses are excluded from being "prior art" if within one year before the application's filing date.  Here, until the courts weigh in, the conservative assumption to make is that this one-year grace period does not apply to these activities.  In other words, don't do anything that might be considered to be a disclosure of the invention until you first have a patent application filed.

In summary, under the new regime of the AIA, patent applications filed after March 16, 2013 will have to overcome a larger universe of "prior art" references to be granted as a U.S. patent, there will be more options for competitors to challenge the validity of such patents, and there will be uncertainty in how the law applies to various situations.  Therefore, potential applicants should consider filing their patent applications before March 16, 2013, to avoid this new regime.

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