The New U.S. Patent Law: A Hybrid patent law combining a first-to-file and a first-to-invent (first-to-publish)

Ken Hattori | October 3, 2011

The newly enacted U.S. patent law is neither a pure first-to-file system, nor a pure first-to-invent (first-to-publish) system, rather it is a hybrid patent system combining both features.

Further, the one-year grace period is unique in that it is based on the effective filing date, which can be the earliest foreign filing date, and not on the U.S. filing date and public disclosure of the invention before filing a patent application within one year excludes third party’s disclosure (prior art) or prior application which is completely different from other countries’ standard grace period.  Thus, the one-year grace period is sort of an absolute grace period.

No other country has this unique patent law.

 1.      First-to-File

§102(a)(1) and (2) define a pure first-to-file system which the rest of the world follows.  The reference date is the effective filing date.

§102(a)(1) prescribes that a patent is not allowed if there is prior art before the effective filing date.

§102(a)(2) prescribes that a patent is not allowed for application (A) if the claimed invention in that application is disclosed in a prior patent application (B) whose effective filing date is earlier than application A’s.

 2.      Grace Period

§102(b)(1)(A) gives a one-year grace period within which the inventor’s own disclosure is not prior art against his application if he files the application within one year from his disclosure.  The current U.S. patent law §102(b) also gives this one-year grace period.

However, this new grace period is completely different from the current grace period in that the reference date under the new law is the effective filing date, whereas it is the U.S. application date under the current §102(b).

Thus, the new patent law allows one-year grace period to the foreign application date if it is the earliest effective filing date.

The rest of the world does not have this broad grace period.

The grace period of both the EPO (the European Patent Office) and the JPO (the Japanese Patent Office) is only six months from the application date in each patent office, not from the foreign filing date.

Thus, if the U.S. applicant publicly discloses his claimed invention and, within one year from the disclosure, files a U.S. application, he may obtain a patent in the U.S., but not in the EPO or in the JPO due to his own disclosure.

Moreover, this one-year grace period is not the standard grace period found in the EPO or in the JPO since it can exclude prior art or prior application between the disclosure and the effective filing date as is explained below.

3.      Exception: First-to-Invent (First-to-Publish)

§102(b)(1)(B) and (2)(B) defines unique exceptions to 102(a)(1) and (2) and provides essentially a first-to-invent (first-to-publish) system.

Under these exceptions, if an inventor publicly discloses his invention and files a patent application within one year, the novelty of his application is not negated even if there is prior art or a prior application by the third party between his public disclosure and the effective filing date.

In the EPO and the JPO, if there is prior art or a prior application before the effective filing date, novelty is negated.

Thus, the one-year grace period under the new U.S. patent law is completely different from that of the EPO or the JPO from this aspect either.

Since the inventor can obtain a patent regardless of whether there is such prior art or a prior application, this grace period is sort of an absolute grace period.

Under this absolute grace period, it is quite conceivable that an inventor, especially a university researcher, will rush to publish his invention once he has conceived it.

Therefore, these exceptions may mean the first-to-invent (first-to-publish) system not only excludes subsequent inventions by others as prior art, but also it does not encourage to file a patent application sooner even though there is a provisional patent filing system under the U.S. patent law.

Thus, the new U.S. patent law is a hybrid system combining a first-to-file and a first-to-invent (first-to-publish) features.

Also, it is conceivable that an inventor in some remote country publishes his broad idea by its strange local language in the area, which almost no one can understand, files a U.S. application within one year and obtains a U.S. patent.

Because a U.S. applicant may obtain a U.S. patent under the above unique grace period in the U.S., but not in Europe or Japan, the U.S. must ask other countries to adapt at least a one year grace period from the effective filing date (the earliest foreign filing date).

It is likely the JPO and the KIPO (Korean Intellectual Property Office) will accept such special grace period, however, it is quite uncertain whether the SIPO (State Intellectual Property Office of China) or the EPO will.

Moreover, even if the JPO and the KIPO accept a one year grace period, it is almost certain that they will not accept sort of the absolute one year grace period excluding third party’s disclosure (prior art) or prior application since it does not encourage filing a patent application sooner and is against the sprit of the first-to-file system.

Since the new U.S. patent system is so different from the pure first-to-file system which the rest of the world follows, it is quite uncertain whether the new U.S. patent system will bring harmonization in the world patent system.

‘‘§ 102. Conditions for patentability; novelty

‘‘(a) Novelty; Prior Art- A person shall be entitled to a patent unless–

‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

‘‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

‘‘(b) Exceptions-

‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–

‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

‘‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–

‘‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

‘‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

‘‘(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.”

 

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