First-to-file system: Implications of a significant change in the law

Steven Wood, Esq.

Licensing Associate Brookhaven National Laboratory March 27 th , 2012

Legal Disclaimer Although I am technically a patent attorney, I work for Brookhaven National Laboratory in a commercialization and business development capacity, and as such am primarily interested in the potential business repercussions of the AIA Additionally, I am not authorized to speak on behalf of my employer and any and all opinions expressed in this presentation are solely my own

America Invents Act

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART. – a person shall be entitled to a patent unless the claimed invention was – (1) patented, described in a printed publication, or in public use, on sale, or “otherwise available to the public” before effective filing date of claimed invention; or

Current First to Invent (FI) vs. AIA First-Inventor to File (FF) FI - “on sale” and “public use” activities required by law to occur within the United States FF - “on sale” and “public use” no longer limited to the U.S.

FI - law does not include the catch-all phrase “otherwise available to the public” FF - claimed invention is not novel if it was “otherwise available to the public” before effective filing date

America Invents Act

§ 102

(b) EXCEPTIONS – (1) disclosures made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under § 102(a)(1) if – (A) disclosure was made by a (joint) inventor or by another who (in)directly obtained from the (joint) inventor the subject matter disclosed (a “deriver”); or (B) subject matter disclosed was publicly disclosed by the (joint) inventor or a “deriver” before such disclosure

America Invents Act

§ 102

(a) a person shall be entitled to a patent unless the claimed invention was – (2) described in a patent issued under section 151, or in an application for patent (deemed) published under § 122(b) which “names another inventor” and is effectively filed before effective filing date of claimed invention

Current First to Invent (FI) vs. AIA First-Inventor to File (FF) FI - section 102(e) prior art “by another” FF - section 102(a)(2) prior art “names another inventor” - Broadening of the prior art?

America Invents Act

§ 102

(b) EXCEPTIONS – (2) disclosures shall not be prior art under subsection § 102(a)(2) if – the subject matter disclosed (A) was obtained (in)directly from the (joint) inventor; (B) was publicly disclosed by the (joint) inventor or a “deriver”, before such subject matter was effectively filed under subsection § 102(a)(2); or (C) “common ownership” of the subject matter disclosed and the claimed invention not later than the effective filing date of the claimed invention

Current First to Invent (FI) vs. AIA First-Inventor to File (FF) FF - new § 102(c) – common ownership FF - new § 102(d) – defines date that “subject matter described” becomes “prior art” under § 102(a)(2) § 102(b)(2) for exceptions FI § 102(g) effectively makes the U.S. a first-to-invent patent system FF - FI § 102(c), 102(d), and 102(g) are removed, and eliminating § 102(g) effectively makes the U.S. a first to-file patent system

America Invents Act

§ 103. Conditions for patentability; non-obvious subject matter

the only substantive change in § 103 is that the prior art of new § 102 is incorporated in new § 103 and as such is now included in the determination of obviousness