Tuesday, April 30, 2013

America Invents Act - USPTO Guidance on First-Inventor-to-File - Videos & Slides

On March 15, 2013, the USPTO published videos and slides regarding the first-inventor-to-file system that help explain the extensive changes to 35 USC 102, especially with respect to the narrowing of the one-year grace period and the various activities that constitute prior art today. Understanding these topics is crucial in seeking a US patent. Here is the USPTO's guidance on the first-inventor-to-file system:

"The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system. The FITF provision includes a 1-year grace period. Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a derived publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).

The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed.

A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar.

Prior public use or sale is no longer limited to the U.S.

For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.

Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102.

In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents.

The FITF provisions take effect on March 16, 2013. 35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications. 

 35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.

35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013.

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