Now that we’ve been studying the Leahy-Smith America Invents Act for a few weeks, some of its subtle intricacies are coming to light. One of the more complex provisions relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102.

The Effective Date Provisions Of The Leahy-Smith America Invents Act

The changes to 35 USC §§ 102, 103, 135 and 291 appear in Section 3 of the America Invents Act, which includes the following effective date provision:

(n) EFFECTIVE DATE.—

(1) IN GENERAL.—Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time
(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

(2) INTERFERING PATENTS.—The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on the day before the effective date set forth in paragraph (1) of this subsection, shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time
(A) a claim to an invention having an effective filing date as defined in section 100(i) of title 35, United States Code, that occurs before the effective date set forth in paragraph (1) of this subsection; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

Each subsection (A) refers to a “claim to a[n] invention”—a patent claim.

Each subsection (B) refers to “a specific reference under section 120, 121, or 365(c)”—a priority claim.

Note that each of paragraphs (1) and (2) include the phrase “contains or contained at any time.” Once the paragraph is satisfied, canceling the patent claim or deleting the priority claim will not avoid or negate its consequences.

What Applications Will Be Subject To The First-To-File Provisions?

The “enactment date” of the Leahy-Smith America Invents act was September 16, 2011, so the 18 month effective date is March 16, 2013. From that date forward, the applicability of the first-to-file provisions to a given application will depend on the effective filing date of the patent claims presented in the application.

It is easy to draw a line between brand new applications and continuation or divisional applicaitons:

  • New applications for which all subject matter has an effective filing date of March 16, 2013 or later will be governed by the first-to-file provisions.
  • Continuation or divisional applications for which all subject matter has an effective filing date earlier than March 16, 2013 will be governed by the (current) first-to-invent provisions.

Continuation-in-part (CIP) applications are trickier.

A CIP application with even a single patent claim that has an effective filing date of March 16, 2013 or later will be subject to the first-to-file provisions.

For such applications, a patent claim with an effective filing date of March 16, 2013 or later (a “new” claim) acts as a “poison pill” in that it irrevocably brings the application—and all applications claiming priority to it—under the first-to-file provisions.

  • Once a “new” patent claim has been presented in a CIP application, that application will be subject to the first-to-file provisions, even if that “new” patent claim is canceled.
  • Once a “new” patent claim has been presented in a CIP application, any application that claims priority to that application will be subject to the first-to-file provisions, even if that “new’ patent claim is canceled.
  • Once a priority claim has been made to an application with a “new” patent claim, the later application will be subject to the first-to-file provisions, even if the priority claim is deleted.

To avoid the harshest consequences of this “poison pill,” applicants filing a CIP application with the intention of pursuing “new” patent claims may want to consider pursuing a parallel application with no new claims, to retain an application eligibile for the first-to-invent provisions.

Non-provisional applications filed on or after March 16, 2013 based on provisional applications filed before that date also could come under the first-to-file provisions if new matter is added to the specification for the non-provisional filing. If any claims ever are presented in the non-provisional application that are not supported by the provisional specification, the application would be subject to the new version of § 102.

What Applications Still Will Be Subject To Interference Proceedings?

Just like a “new” patent claim acts as a poison pill that invokes the first-to-file provisions for an entire application, an “old” claim acts as an antedote that retains the interfernece-related provisions of current 35 USC §§ 102(g), 135 and 291.

  • Once an “old” patent claim has been presented in a CIP application, that application will be subject to the interfernce provisions, even if that “old” patent claim is canceled.
  • Once an “old” patent claim has been presented in a CIP application, any application that claims priority to that application will be subject to the interfernce provisions, even if that “old’ patent claim is canceled.
  • Once a priority claim has been made to an application with an “old” patent claim, the later application will be subject to the interference provisions, even if the priority claim is deleted.

To avoid the complications of having an application subject to both the old interference provisions and the new prior art provisions, applicants may want to consider pursuing parallel applications with only “new” patent claims in one application and only “old” patent claims in the other.

This solution may not be practical for non-provisional applications that stradle the March 16, 2013 effective date. It is likely that most of such applications will have both “old” claims and “new” claims and so will be subject to both the interference provisions and the first-to-file provisions.

The Patent Office Should Provide Further Guidance In Its Implementing Regulations

The Patent Office has indicated that it will be issuing proposed implenting regulations by the end of December 2011. Hopefully the regulations will provide clear guidance on the applicability of the first-to-file, first-to-invent, and interference provisions. Interested parties can provide informal comments and suggestions to the USPTO officials identified on the patent reform implementation website and can participate in the formal “notice and comment” rulemaking process once the proposed rules are promulgated.