First-To-File … So What?

March 16, 2013 has come and gone, and United States patent law has shifted from a first-to-invent system to a first-to-file system.

So what does that mean to you as an inventor?  First, you need to understand what may qualify as prior art that can render your invention unpatentable.

The new definition of novelty can be found in 35 U.S.C. 102.  To paraphrase, a person shall be entitled to a patent unless prior art matching a given subject matter existed before the person’s effective filing date for a patent on the claimed subject matter.  As an inventor, your effective date of filing a patent application, either in the United States or abroad, is now crucial.  No longer can you rely on verifiable proof of a date of invention to establish patent rights in the United States.  The game has changed:  You are now in a race for the patent office.

Still paraphrasing, the new rules define prior art as including subject matter that, before the effective filing date, already has been patented by another inventor anywhere in the world or described in printed publication (such as a magazine or scholarly article) by another inventor anywhere in the world.  Selling, offering for sale, publicly using, or otherwise making the subject matter available to the public anywhere in the world before the effective filing date also may qualify as prior art.  No longer can you limit your prior art search (including your own business activities) to sales and/or public use only in the United States.

Furthermore, no longer can you, as the inventor, file a patent application up to one year after the date of a sale or offer for sale, public use, or disclosure by another of your invention.  Although the new law recognizes a one-year ‘grace period’ during which disclosures by the inventor or co-inventor will not qualify as prior art against the invention itself, no such grace period exists for sales, offers for sale, or for public use.  Also, no stealing allowed:  the law does not consider as prior art any subject matter  of your invention obtained by someone else either directly or indirectly from you or your co-inventor.

So how might the new patent law change your business planning and activities?  Here a few examples of DOs and DON’Ts:

DON’T:  Go to a trade show in Las Vegas with a new mouse trap for which you have not yet filed a patent application with the USPTO, and offer to sell the floor model to a customer (ON SALE makes it prior art in the U.S.)

DON’T:  Go to a trade show in Germany with an innovative t-shirt press for which you have not yet filed a patent application with the USPTO, and press a design on a customer’s shirt (PUBLIC USE anywhere in the world makes it prior art in the U.S.)

DO (MAYBE):  Post on your website information about an innovative widget that is not yet on the market and for which you have not yet filed a patent application with the USPTO (PUBLIC DISCLOSURE by the inventor is not prior art, but it does start the one year grace period to file for patent protection in the U.S.)

DON’T:  Post on your website a working copy of an innovative web-based software application for which you have not yet filed a patent application with the USPTO, and that may be operated by website visitors (PUBLIC USE anywhere in the world makes it prior art in the U.S.)

DO (MAYBE):  Go to a trade show in Orlando and distribute product pamphlets as well as show a video demonstrating how to ride a new wakeboard that is under development, but for which you have not yet filed a patent application with the USPTO (PUBLIC DISCLOSURE by the inventor is not prior art, but it does start the one year grace period to file for patent protection in the U.S.)

DO (BETTER):  File a provisional or non-provisional patent application with the United States Patent and Trademark Office on your invention before you exhibit at that trade show, publish that article, and/or post that webpage.

NOTE:  These same scenarios may have a different impact on patent rights in countries other than the U.S.  For example, public disclosure of your invention may trigger the one year grace period in the U.S., but also may immediately terminate foreign patent rights for the same invention.  Consider seeking the help of a registered patent attorney to develop a comprehensive defense plan to protect your rights both in the U.S. and abroad.

Check out the UPSTO training materials for more information on prior art under the America Invents Act.