The America Invents Act (AIA) was signed on 8th September 2011, and the new US first-to-file patent system will come into force on 16th March 2013. Although some of the detailed rules implementing the system have yet to be agreed, the core changes to the US patent system have already been finalised and will affect anyone filing US patent applications on or after 16th March 2013. In light of this, it could be time to revisit your patent filing strategy.
As noted in our previous articles, the AIA will transform the US patent system from a first-to-invent system to a first-to-file-system. Other major changes resulting from the AIA include: the one year grace period which will be much reduced in scope so that it will only apply to prior art disclosures originating from the inventor; the redefinition of what constitutes prior art in the US so that it will now be determined based on the earliest effective filing date (rather than the earlier date of invention); as well as the introduction of a post grant review procedure.
Prior to the AIA coming into force, a public use or sale of the invention, or knowledge or use of the invention which is accessible to the public, only constitutes prior art in the US if it occurs in the US, despite the fact that this would probably be prejudicial to patentability in most other jurisdictions. The AIA removes the territorial restrictions of public use, sale, and knowledge outside the US so that there are no territorial restrictions on when public use, sale, or knowledge of the invention constitutes prior art in the US.
Consequently, under the AIA, any public use, sale or knowledge of the invention anywhere in the world before the priority or filing date of a US patent application will now constitute prior art against that US patent application. Therefore, if an invention has been used or sold outside the US, but no patent application has yet been filed, it may still not be too late to file a US patent application for that invention under the old law. In this case, the inventions’ disclosure will not constitute prior art against the application. In most cases, this will mean filing a US application for the invention prior to 16th March 2013, when this part of the AIA enters into force.
However, transitional provisions are provided when, for example, a US patent application is filed on or after 16th March 2013, but claims priority from an application filed before 16th March 2013. In such cases, the determination as to whether the USPTO examines the application based on the old law or the new AIA is based on whether it contains or contained at any time a claim to a claimed invention that has an effective filing date on or after 16th March 2013. If it does, then it is examined under the new AIA.
The USPTO has passed the burden of identifying any subject matter which has an effective filing date on or after 16th March 2013 to the applicant. If the applicant fails to provide a statement identifying such subject matter within the deadline set by the USPTO then any claim to priority is deemed invalid. Thus, there is a very harsh penalty if the applicant does not draw this subject matter to the attention of the USPTO.
Applicants should also proceed with caution because the determination as to whether an application is to be examined under the old law or new AIA is a one way street. Once an applicant has made a statement to the USPTO that an application contains at least one claim with an effective date on or after 16th March 2013, he cannot later revert to the old law even if he removes those claims. This also applies to amended claims filed during prosecution so that if any amendments result in a change of effective filing date to on or after 16th March 2013, the case will be treated under the new AIA law. This presents a potential trap for the unwary applicant.
In light of this, there may be cases where it is beneficial to file a US application on or after 16th March 2013, which is identical to, and claims priority from an application filed before 16th March 2013. In such a scenario, since the later US application is identical to the earlier priority application, the later application cannot on filing, or by amendment during prosecution, contain any subject matter which has an effective date of or after 16th March 2013. The USPTO will therefore examine the application under the old law.
This may be advantageous to applicants in terms of the broader grace period provided and with provision of the first-to-invent system rather than the first-to-file system. Further, the applicant can also take advantage of the old system in which prior art effect is determined based on the date of invention, rather than effective filing date. It would also mean that any patent granted under the old law cannot be challenged under the new post grant review procedure.
In the past, some overseas applicants have adopted a filing strategy to first file their patent applications in the US, to take advantage of the grace period and the first-to-invent system. However, as a result of the AIA, these advantages have been largely eliminated, and for applicants based outside the US, a simpler and more cost-effective strategy may now be to first file their patent applications in their home jurisdiction.
As the first-to-invent system will be replaced by the first-to-file system on 16th March 2013, time is running out for applicants who wish to take advantage of the current first-to-invent system. Nevertheless, as a result of the transitional provisions, the two systems will coexist for many years to come, and in certain circumstances applicants will be able to draft their US patent applications in a way that will ensure that they are examined under the old law, such as when the application claims priority from an application filed before 16th March 2013.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.