On September 16, 2011, President Barack Obama signed the “Leahy-Smith America Invents Act” (AIA) into law. The new law makes dramatic changes to the United States’ patent system. Under the AIA, the United Sates will transition from a “first to invent” patent system to a modified “first to file” patent system in 2013.[1] Because of the close relationship between patent rights and the development of new products, these changes will have a resonating effect on the interplay between patents and product development.
CURRENT SYSTEM
Under current United States patent law, the first inventor to conceive and reduce an invention to practice is granted the right to prevent others from practicing the invention for twenty years from the filing date of the patent application.[2] During prosecution of a patent application, the patent office uses the date an invention was first conceived by the inventor (assuming the inventor was diligent in reducing the invention to practice) as the date that determines what references are used to prevent a patent from issuing. An inventor can forfeit any patent rights in the invention by publicly disclosing the invention more than 1 year prior to filing a patent application.[3] A disclosure, under current patent law and the AIA, can include, for example, an article describing an invention, a presentation which discusses an invention, a public display that includes an invention, or an attempt to sell an invention to a third party.[4] It is important to note that this 1 year “grace period” does not exist in many foreign countries, and any disclosure of an invention before a patent application is filed will prevent an inventor from obtaining a patent for the invention in those countries.
NEW SYSTEM
Under the AIA, the first inventor to file an application for an invention receives the right to obtain a patent for the invention, as long as the remaining criteria for patentability are satisfied.[5] The date an invention is conceived will no longer be available to argue around a prior art reference.
Like the current system, the AIA provides a 1 year “grace period” for filing a United States patent application after the invention is disclosed to the public. Specifically, the AIA states:
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.[6]
Under this provision of the AIA, an inventor can disclose their invention, either directly or indirectly, without losing potential patent rights in the United States.[7] However, it again is important to note that this 1 year “grace period” does not exist in many foreign countries, and any disclosure of an invention before a patent application is filed, even under the AIA, will prevent an inventor from obtaining a patent for the invention in those countries.
Further, unlike current patent law, under the AIA a disclosure alone can now prevent another inventor from obtaining patent rights for the same invention, even if the other inventor is the first inventor. Consider this example: inventor A discloses an invention by publishing the invention in an article. Inventor B, the actual first inventor, files a patent application for the same invention as disclosed by inventor A, after inventor A has made the disclosure. Under the AIA, inventor B is prevented from obtaining a patent for the invention, but inventor A can still file and obtain patent rights in the United States if inventor A’s application is filed within twelve months of the date the disclosure is made.
As another example, inventor A, the first inventor, never discloses an invention, but inventor B publicly discloses the same invention before inventor A files a patent application. Under the AIA, inventor A is prevented from obtaining a patent for the invention, even though inventor A conceived the invention earlier than inventor B. As these examples demonstrate, the new priority process under the AIA is not as straightforward as a true “first to file” system. However, the AIA’s modified “first to file” system, and the AIA’s continued grace period for public disclosures provided by the AIA, aligns nicely with the process of developing a product, particularly in cases when foreign patent protection is not desired.
PRODUCT DEVELOPMENT PROCESS
Inventors tend to follow the same path in transforming an initial concept into a final marketable product. The figure below represents a typical product development process that involves conceptualizing a product, researching the concept to determine viability, analyzing the concept in view of potential markets, revising the concept in view of market forces and technical feasibility, developing prototypes of the product, testing the product, revising the prototypes based on the test results and, finally, launching the product.
Currently, the patent process typically is tangentially incorporated into the product development process. Under the current system, an initial concept is captured in a provisional application, and a non-provisional application capturing any new features is normally filed 1 year later. Typically, additional applications are not filed between the filing of the provisional application and the filing of the non-provisional application. This process tends to ignore innovations made during the development of a product that are not incorporated into the final product.
Under the AIA’s modified “first to file” system, the new motto is “file first and file often.” Accordingly, the new “first to file” system incentivizes the continuous filing of provisional applications to capture new innovations realized, and those not realized, during the design process. This is a significant departure from the current system, which has led to filing a single provisional application, waiting 1 year, and then filing a non-provisional application. Since the initial invention date no longer secures rights in an invention, an inventor should continuously file applications to preserve patent rights for the modifications to the initial design. While this is a dramatic departure from typical current patent practice, this process is in line with typical product development processes, where product specifications, operating procedures, and drawings, are continuously updated and revised as a product is developed.
Further, the AIA allows inventors to analyze the potential market for an invention by continuing the 1 year “grace period” for filing a patent application after a public disclosure of the invention. The importance of this ongoing provision can be seen in the context of the market analysis step in the product development process. To truly determine the market viability of a product embodying an invention, information must be gathered from potential purchasers of the product. Accordingly, at some point in time, a disclosure of the invention may occur.
The AIA’s “grace period” acts as a safeguard that prevents an inventor from losing patent rights in the United States in the event a public disclosure is made. In fact, under the AIA, in certain circumstances an early public disclosure of the invention not only can preserve an inventor’s right to file a United States patent application for 1 year, it also can prevent a competitor from obtaining patent protection for the same invention, even though the competitor was the first inventor. The AIA’s “grace period” provision therefore continues to provide inventors with a means to fully investigate, and analyze, an invention in view of current market trends, which can results in better products and better patents. As discussed above, there are significant potential downsides to utilizing the “grace period,” both under the current system and under the AIA, and inventors should consult with their patent counsel to discuss the particulars of their situation prior to any disclosure of an invention.
The successful integration of the AIA’s modified “first to file” system into product development no doubt will involve additional cooperation between inventors and patent counsel to develop effective procedures that will protect patent rights available to inventors. The product development process inherently includes continuous updating and revising of specifications and drawings, so little adjustment will be required to conform the product development process to the new patent rules. With the new changes implemented by the AIA, inventors should work closely with their patent counsel to develop procedures to continuously identify patentable aspects of a product as part of the product development process.
Under the current system, an inventor may interact with patent counsel when the initial provisional patent application is filed, and then again about one to two months before the provisional patent application expires. Under the AIA, inventors should consult with their patent counsel during all stages of product development to help identify areas of the product that deserve patent protection. This increased level of communication and involvement should result in clearer, more valuable patents and may lead to a reduction in the cost of drafting and prosecuting patent applications.
Only time will tell how dramatically the AIA will affect product development, and how inventors and patent counsel will adapt to the new rules. In any event, the AIA provides a unique opportunity for inventors and patent counsel to revisit how inventions are recorded and converted into patent applications and to consider the level of interaction between inventor and patent counsel that yields the best results.
[1] See, H.R. 1249, Sec. 3.
[2] See, 35 U.S.C. §101
[3] See, 35 U.S.C. §102
[4] See, MPEP 2100
[5] See, H.R. 1249, Sec. 3.
[6] See, 35 U.S.C. § 102 (b)(1) and (2)
[7] See, Id.
