See the Federal Register publications: Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act and Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines
The USPTO also published guidelines setting forth its interpretation of how the first inventor to file provision changes the current novelty and obviousness requirements. The guidelines inform how the law has changed (expanded) the scope of prior art and changed (narrowed) the scope of the grace period.
The Acting Director of the USPTO Teresa Stanek Rea states: "Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."
Usually if the law changes radically, a litigant will push for a favorable interpretation of the new law. Until the court decisions build up and limit possible interpretations, the law is likely to be less predictable. On the other hand, the first inventor to file system provision may bring greater predictability in the long term, since many priority disputes will be resolvable by filing date.
On the flip side, unpredictability may arise in the new derivation proceedings that are intended to ensure a person will not be able to obtain a patent even when filing first for an invention that he or she did not actually invent. The scope of the one-year grace period is another area to expect unpredictability. Sure patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures, but what happens when the third party disclosure is not identical to the "first" inventor's disclosure? Do we have a one-year grace period against the third party disclosure? Further, do we have a grace period for an third party offer for sale or public use? Thus, unpredictability exists on the grace period of the new law.
The migration to the first inventor to file system is another step toward harmonizing U.S. patent law with that of the rest of the world, but the US definition of prior art and scope of the grace period is different. And the steps proceed in parallel for better or worse. For example, the USPTO implemented a common classification system for the USPTO and the EPO to enhance examination on January 1, 2013. The so-called Tegernsee Group is another effort to harmonize patent law among the major offices.
The USPTO is also giving a fair level of customer support. It will give more information on the first-inventor-to-file provision at a public training session held at the USPTO in Alexandria, Virginia on March 8, 2013, which will also be available on the Web. See details at www.uspto.gov/americainventsact. Also one may contact the AIA help line at 1-855-HELP-AIA (1-855-435-7242) or send an email to helpaia@uspto.gov for first-inventor-to-file and other AIA questions. The USPTO also suggests if we have questions regarding the final rules to call Ms. Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711 and direct questions about the first-inventor-to-file final examination guidelines to Ms. Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.
Copyright © 2013 Robert Moll. All rights reserved.
