Finally Facing First Inventor to File Issues

15 October 2014 PharmaPatents Blog

It has been over three years since the Leahy-Smith America Invents Act was signed into law by President Obama, and just over eighteen months since the effective date of the first-inventor-to-file changes to 35 USC § 102. While those changes were a hot topic in March of 2013, it is only over the past few weeks that I have been facing first-inventor-to-file issues in my daily practice. These are a few of the questions I have been encountering.

Should We Check The Box?

The USPTO rules require Applicants to identify applications that straddle the first-inventor-to-file (FITF) effective date that should be examined under the FTIF version of  § 102, which can be done by checking this box on the Application Data Sheet.

I have been filing continuation and divisional applications where the box did not need to be checked because all claims had an effective filing date before March 16, 2013, and I have been filing new applications where the box did not need to be checked because the applications did not claim a priority date before March 16, 2013, but now I am filing U.S. national stage applications of PCT applications filed on or after March 16, 2013 that claim priority to applications filed before March 16, 2013.

Do I need to check the box? Does the PCT application contain any claims that are not supported by the priority application?

Will The Inventor’s Publication Be Prior Art? 

We are evaluating an invention for filing a new patent application, and an inventor already has published an article on the technology. Will the article be prior art?

If the article was published less than one year ago and is authored by the inventor(s), we should be able to invoke 35 USC § 102(b)(1)(A), which excepts from § 102(a)(1)-type prior art disclosures “made by the inventor or joint inventor.”  If the article was published by others in the inventor’s group, we may able to invoke 35 USC § 102(b)(1)(A), which excepts from § 102(a)(1)-type prior art disclosures made “by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

Will The Client’s Earlier Application Be Prior Art? 

We are evaluating an invention for filing a new patent application, and the client already has filed a patent application on related technology. Will the application be prior art?

If the application has not yet been published, we should be able to invoke 35 USC § 102(b)(2)(C), which excepts from § 102(a)(2)-type prior art disclosures appearing in patent applications if “the subject matter disclosed and the claimed invention … were owned by the same person or subject to an obligation of assignment to the same person.”

If the application already has been published, we also have to consider its possible prior art effect under § 102(a)(1) and the availability of the exceptions of § 102(b)(1). Thus, if the application names the same or overlapping inventors, we should be able to invoke the ”made by the inventor or joint inventor” provisions of 35 USC § 102(b)(1)(A). On the other hand, if the application does not name overlapping inventors, we may have to determine whether the potentially relevant disclosure was made “by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

The Tip Of The First To File Iceberg 

Since all of these questions arose in the past few weeks, I am sure that this is just the tip of the iceberg, with many more new first-inventor-to-file questions yet to surface. As they arise, I am reviewing my original articles on Patent Reform, printing off fresh copies of the Federal Register Notices with the USPTO’s final FITF rules and guidance, and keeping a copy of the revised statutes handy.

Have you encountered any new first-inventor-to-file issues? 

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