A CRITICAL ANALYSIS OF THE MUCH AWAITED FEATURE OF AMERICA INVENTS ACT

Ashutosh Pandey

Intellectual Property Analysis Division, Stellarix Consultancy Services Pvt. Ltd., India

(+91) 141-511-1443

America Invents Act (also known as Leahy-Smith America Invents Act) is an amendment to the title 35, United States Code (35 USC). The bill was presented in the United States Senate on 25th January 2011. Also it is a well-known event that on 16th September 2011 US President Barack Obama signed the America Invents Act into a law at the ceremony in Thomas Jefferson High School for Science and Technology in Northern Virginia.

Experts have unanimously agreed on the fact that America Invents Act is the major overhaul in the United States patent law since 1952. In support of the new act Aneesh Chopra (1st Chief Technology Officer of the United States) said on Whitehouse blog:

“By transitioning to a simpler, more objective, and more inventor-friendly system of issuing patents, the new Act helps ensure that independent inventors and small entities have greater clarity and certainty over their property rights and will be able to navigate the patent system on a more equitable footing with large enterprises.

The Act also establishes a new in-house review process for challenging patents-a process that is faster and significantly cheaper than litigation, which too often stymies technological growth.” 

Though the America Invents Act talks about many important patent law reforms but we are restricting this blog’s discussion on the main feature of AIA:

Transition from First-To-Invent to First-Inventor-To-File system

This is considered to be the main change in the US patent law which will come into effect from 16th March 2013. To know more about the effective dates of implementation of the provisions of AIA please click. Coming to the terminologies of the law: In simple words First-To-Invent concept proposes that the applicant who claims to first invent the invention will generally get the patent (it is not as simple as it seems, but we are skipping the details; for more details please click) whereas First-Inventor-To-File (FITF) means that the applicant who first files the application with the patent office will get the patent (considering the application fulfils other required standards) irrespective of who invents/conceives the invention first. Currently First-To-File system is followed across the globe. Historically, Apart from United States; Canada and Philippines were other countries where First-To-Invent concept was in effect until they shifted to First-To-File system (1989-Canada and 1998-Philippines).

We are including one very simple case study to clear the difference between the First-To-Invent and First-Inventor-To-File concepts:

Case Study:

Here are the points to consider:

i. Dexter conceptualizes a new kind of portable room heater on 6th March 2012 and he works diligently to prepare his patent application. And then he files his patent application after two months i.e. on 6th May 2012.

ii. Dee Dee too conceives a similar portable room heater but on 15th March and then she files the application on 1st May 2012 (5 days before Dexter’s application).

iii. Now there is another guy named Mandark who made the similar product (portable room heater) in 2005 for his personal use and he never told anyone else that he invented / built that product. In short he did not care about the public disclosure of his invention!!!

Now considering the above three scenarios we are going to discuss the future of the applications filed by Dexter and Dee Dee under the First-To-Invent and First-Inventor-To-File concepts:

In case of First-To-Invent rule Dexter is entitled to get the patent because he conceptualized the invention before Dee Dee and worked diligently to reduce the invention to practice by filing the application. Although he has to produce the proof that he conceived the idea before Dee Dee.

If it is First-Inventor-To-File rule then Dee Dee is entitled to get the patent simply because she was quick enough to file the application.

Now what will be the fate of Mandark who made this invention long ago? Will he get any benefit of the patents granted to Dexter or Dee Dee? The answer is: NO!!!

It is because Mandark never disclosed in public (e.g. through publication, YouTube video etc.) about his invention. If Mandark could publish his invention before 2012 then that publication can be used as a prior art to reject the patent application filed by Dexter and Dee Dee.

Above discussion may create a very genuine doubt in your mind, which is:

First-Inventor-To-File v/s First-To-File systems:

There is one very important thing to note is that, there is a minor difference between First-Inventor-To-File and First-To-File (system which is being followed in the rest of the world other than US). In FITF system the applicant must be an inventor of the claimed invention, it is no longer required that the inventor be the first true inventor, but rather only the first inventor to file or publicly disclose the invention. Also there is no need to consider date of conception / invention in determining patentability. The goal of this change is to streamline the U.S. system with other countries, by utilizing some form of the First-To-File system, and also ensuring the individual who obtains a patent is a true inventor (similar to making of the constitution of South Africa; they picked all the good points from other countries law books and then made their own constitution which is now highly admired across the globe).

Now we are focussing on FITF system with a different perspective which says that there are two exceptions possible. First, a public disclosure will not deny patentability to the inventor if, within one year of the effective filing date of the application (grace period), the disclosure was made by the inventor or another party who obtained the disclosed subject matter from the inventor. Second, another party’s public disclosure before the effective filing date of the application will not deny patentability to the inventor if, before the disclosure, the disclosed subject matter was made public by the inventor or another who obtained the subject matter from the inventor. Basically, these exceptions allow the inventor, by being the first to publicly disclose the invention, to deny all others from obtaining a patent. In short this public disclosure will not hamper the inventor’s/discloser’s rights as long as an application is filed within one year of the disclosure.

The two exceptions mentioned above made some to say the first-inventor-to-file system created by the America Invents Act is in fact a first-inventor-to-file-or-publicly-disclose system. While a public disclosure will protect the rights of the inventor in the United States, though it may deny the granting of a patent in foreign countries that require absolute novelty. One more thing; as before, a patent will not be granted on a claimed invention if the differences between the claimed invention and the prior art are such that the claimed invention would have been obvious before or at the time of the effective filing date to a person of ordinary skill in the art. One more thing is there to consider that this new system will end Interference Proceedings in United States (it will be replaced by the “Derivation Proceedings”) after 16th March 2013.

There may be a negative implication of this new FITF system. It may put the independent inventors in a slightly lower ground. There may be financial constraint or other reasons for them to not able to publicly disclose their inventions at the earliest. We are also hoping for more hidden implications of the America Invents Act in coming days. Finally we would like to say that it is a welcome change in the United States Patent Law.

Hope you have liked this article. Please feel free to discuss it. Also keep visiting our blog for new happenings in the area of Intellectual Property.

Auf Wiedersehen!!!

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