Which Patent Law Will Apply to My Application After March 16, 2013? - Navigating the Applicability of the First Inventor to File Provisions of the America Invents Act
As we discussed last month, the "first inventor to file" provisions of the America Invents Act (AIA) go into effect next month on March 16. The USPTO issued its final rules for implementing the AIA last week, and a copy of the rules can be found here.
Figuring out whether the AIA or pre-AIA law governs any particular patent application is trickier than you may think. In some cases, it will depend on what you do to the claims during prosecution. Here's how it breaks down:
- Applications Filed Before March 16, 2013
U.S. patent applications filed before March 16, 2013 are subject to the current first to invent patentability rules. This is true even if claims are added to the application or amended after March 16, 2013. The Patent Office has indicated that Requests for Continued Examination will not be treated as new applications for purposes of determining whether an application was filed before or after March 16. Nor will the entry of a Patent Cooperation Treaty (PCT) application into the U.S. national phase after March 16 be subject to the first inventor to file provisions if the PCT application itself was filed before March 16.
2. Applications Filed After March 16, 2013
This one is fairly straightforward also. If an application is filed after March 16, 2013 and does not claim priority to an application filed before that date, the first inventor to file provisions of the AIA will govern its examination.
3. Applications Filed After March 16, 2013 Which Claim Priority to Applications Filed Before March 16, 2013
Here's where things get tricky. The nature of any claim amendments filed after March 16, 2013 may move you from the first to invent to the first inventor to file regime, in particular if you are dealing with non-provisional applications that claim the benefit of provisional or foreign applications filed before March 16, 2013 or continuations-in-part (CIP) of pre- March 16, 2013 applications.
Here is an example. Suppose you filed a provisional application on March 17, 2012 and now file a non-provisional on March 17, 2013 which claims the benefit of the provisional application's filing date. Which law will apply in examining the non-provisional application? The answer is that it depends on the claims submitted in the non-provisional application and whether they are fully supported by the provisional application. If a claim is submitted that is not supported by the provisional, its "effective filing date" will be the date that the non-provisional application was filed, not the date the provisional application was filed. In that case, the entire non-provisional application will be subject to the first inventor to file law, not just the claim with the post March 16, 2013 effective filing date. Here's how the Patent Office explains the rule in the examination guidelines:
If there is ever a single claim to a claimed invention having an effective filing date on or after March 16, 2013, AIA 35 U.S.C. 102 and 103 apply in determining the patentability of every claimed invention in the application. This is the situation even if all remaining inventions have an effective filing date before March 16, 2013, and even if the claim to a claimed invention having an effective filing date after March 16, 2013 is canceled.
Federal Register, Vol. 78, No. 31 at 11083 (Feb. 14, 2013) (emphasis added).
4. Applications with Some Claims Having Pre-March 16, 2013 Effective Filing Dates and Other Claims Having Post-March 16, 2013 Effective Filing Dates.
A true "continuation" or "divisional" application filed after March 16, 2013 and claiming priority to a pre-March 16, 2013 application should be subject to the first to invent system because by definition any claims in these applications must be fully supported by the earlier application. This is not necessarily the case for continuation-in-part applications because, by definition, they include some subject matter that was not present in the earlier application. Thus, a continuation-in-part of a pre-March 16, 2013 application may have claims with effective dates falling before or after March 16, 2013.
There is an additional wrinkle. Under current law, 35 U.S.C. 102(g) forbids issuing a patent if someone else invented what is claimed prior to the applicant (and did not abandon, suppress or conceal it), regardless of whether the subject of the prior invention was disclosed in a patent, patent application or a product that was publicly used or sold. Since current Section 102(g) is essentially a "first to invent" rule, you might think it inapplicable to patent applications that are subject to the AIA's first inventor to file rules. That is not necessarily the case.
Even though a claim amendment may trigger the applicability of the first inventor to file rules, the application will also remain subject to the prior invention provision of current 35 U.S.C. 102(g) if the application (1) contains or ever contained a claim with an effective filing date prior to March 16, 2013, or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or ever contained a claimed invention with an effective filing date before March 16, 2013. Thus, applications that include some claims with pre-March 16, 2013 effective filing dates and other claims with post-March 16, 2013 effective filing dates will be subject to the current Section 102(g), as will patents issuing from them. Such applications and patents will not be subject to the other provisions of current Section 102. These "mixed claim" applications and patents essentially suffer the burdens of the first to file system without enjoying the benefits of the system because in order to get a patent, the inventor must be both the first to invent and the first inventor to file.
As the foregoing suggests, the process of sorting out whether the AIA or pre-AIA law applies to any particular patent application may be a thorny one. As the Patent Office put it, "care must be taken to accurately determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the application." Id. at 11084.