The “first-to-file” provisions of the America Invents Act (AIA) take effect on March 16, 2013. Here, I highlight a few reasons why many applicants will not want their patent applications to be subject to the new version of 35 USC § 102, and why all applicants—and their patent counsel—should be aware of the significance of March 15, 2013—the Ides of March.

A Wider Prior Art Landscape

  • Applications filed after March 15, 2013 will be subject to more “secret” prior art. Under new 35 USC § 102(a)(2) and § 102(d), published U.S. patent applications and PCT applications that designate the U.S. will be prior art as of the filing date of any earlier U.S. or foreign priority application “that describes the subject matter at issue.”  Unlike most other “first-to-file” countries, such secret prior art may be citable to establish obviousness.
  • Applications filed after March 15, 2013 will not be able to avoid third party prior art published less than one year before the filing date, unless the applicability of one of the limited exceptions of new 35 USC § 102(b) can be established.
  • An Applicant will not be able to avoid third party prior art by establishing an earlier date of invention. To invoke one of the limited exceptions of new 35 USC § 102(b), the Applicant will have to establish that the disclosure at issue “was obtained directly or indirectly” from an inventor (35 USC § 102(b)(1)(A)) or previously had been disclosed by an inventor or another who obtained the subject matter directly or indirectly from an inventor (35 USC § 102(b)(1)(B)). This likely will require some correlation among the previous inventor-derived disclosure, the prior art disclosure at issue, and the claimed subject matter at issue.

A Narrower Right Against Earlier-Filed Copending Applications

  • An Applicant will not be able to avoid the prior art effect of an earlier-filed third-party application by establishing priority in an interference proceeding. The Applicant’s only possible recourse against an earlier-filed copending application directed to the same invention will be in a derivation proceeding, which will require proof that the other inventor “derived the claimed invention from an inventor named in the petitioner’s application.”

A More Vulnerable Patent Right

  • Patents granted from applications subject to the new version of § 102 will be subject to the new Post Grant Review proceedings, by which a third party can challenge (within nine months of the patent’s grant date or reissue date) the validity of a patent under a preponderance of the evidence standard “on any ground that could be raised” under 35 USC § 282(b)(2) or (3). This includes issues pertaining to 35 USC § 101 and 35 USC § 112, which cannot be raised in Reexamination or Inter Partes Review proceedings.

A Measured Approach To The Ides Of March

Despite these important reasons to file new U.S. patent applications by March 15, 2013, Applicants need not file all U.S. patent applications by that date. Between the AIA amendments to 35 USC § 100 and the effective date provisions of the first-to-file changes, several different types of applications may be grandfathered in to the current first-to-invent system, as long as all claims ever presented are entitled to an effective filing date of March 15, 2013 or earlier:

  • U.S. applications with a Paris Convention priority claim to a foreign application filed by March 15, 2013
  • U.S. national stage applications based on a PCT application filed by March 15, 2013
  • U.S. national stage applications based on a PCT application filed after March 15, 2013 with a priority claim to a foreign application filed by March 15, 2013
  • U.S. non-provisional applications with a priority claim to a provisional application filed by March 15, 2013
  • U.S. continuation applications with a priority claim to a U.S. application filed by March 15, 2013
  • U.S. divisional applications with a priority claim to a U.S. application filed by March 15, 2013
  • U.S. continuation-in-part applications with a priority claim to a U.S. application filed by March 15, 2013

On the other hand, the presentation of any claim directed to subject matter with an effective filing date of March 16, 2013 or later will make the entire application subject to the new, first-to-file version of 35 USC § 102. That means that the following types of applications filed on or after March 16, 2013 could be subject to the new law, despite a priority claim of March 15, 2013 or earlier:

  • U.S. non-provisional applications with a priority claim to a provisional application filed by March 15, 2013, but claiming subject matter added in an application filed on or after March 16, 2013.
  • U.S. continuation-in-part applications with a priority claim to a U.S. application filed by March 15, 2013, but claiming subject matter added in an application filed on or after March 16, 2013.
  • U.S. applications with a Paris Convention priority claim to a foreign application filed by March 15, 2013, but claiming subject matter added in an application filed on or after March 16, 2013.

This analysis shows that it could be important to file patent applications that claim new subject matter by March 15, 2013.

While the patentability of many applications may not depend on which version of the law applies, Applicants concerned about the possibility of additional prior art and/or the threat of Post Grant Review may want to consider advising their researchers of the significance of March 15, 2013, so that inventions that may be ready for patenting can be evaluated and flagged for patent application filings before the next Ides of March.