On Thursday, September 8, 2011, the Senate passed the America Invents Act and President Obama is expected to sign the legislation this week. Every 2 years since 2005, Congress has taken up the issue of patent reform to address issues surrounding patent validity (e.g. first-to-file v. first-to-conceive; best mode), patent prosecution (e.g. opposition proceedings; inventor’s oath), and patent litigation (e.g. forum shopping, damages, willful infringement, patent unenforceability).

One significant change in patent law provided by this Act is changing U.S. law from a first-to-conceive system to a first-to-file system. The first-to-conceive system was considered helpful to individual inventors and small companies with limited resources by giving them time to develop their inventions and to file patent applications. However, this system created uncertainty about who would have priority of invention and what prior art could be considered when assessing the validity of a patent. The U.S. was also out of step with the rest of the world, because it was the only country that used first-to-conceive.

In addition to creating greater certainty about a patent’s date of invention, this reform will have a significant effect on how patent practitioners advise their clients about obtaining protection for their inventions. The first-to-file system may increase the pressure to file patent applications quickly after conception and before commercial reduction to practice, as is common in Japan.

Some predict that application and claim quality will decrease with the “race” to file applications. However, the quality of European patents under a similar first-to-file system has shown that this will unlikely be the case. Moreover, 35 U.S.C. §102, as revised, provides a unique protection for inventors that publish or publicly disclose their invention less than one year before filing their patent application. Under this new standard, third party patent application filings or publications that occur after the inventor’s publication or public disclosure will not be invalidating prior art. A company or inventor that makes the decision to pursue a patent in the United States only and in no other country, and who wants to obtain the earliest possible priority date, may consider publishing their invention or an embodiment of their invention on their website first. This will provide the practitioner and the client time to prepare a thorough patent application to submit to the Patent Office. One point of caution, though, is that this provision is unique to U.S. patent law and will cause the applicant to forego any opportunity to file for patent protection on the same invention in foreign countries.

One element of uncertainty that will be created by this Act, at least for the next five to ten years, is the definition of invalidating prior art. Prior to this reform, decades of case law had been established to define what was necessary for prior art to be invalidating because it was “known,” “used,” “patented,” “described in a printed publication,” “in public use” or “on sale.” However, 35 U.S.C. §102, as amended, has introduced a new standard of “otherwise available to the public.” The statute does not define this phrase and it will take time for the Federal Circuit to sort out. While this Act has created some certainty as to what may qualify as invalidating prior art with respect to the invention date, it has introduced a new level of uncertainty as to what types or quality of publications or events may qualify as invalidating prior art.

While first-to-file reform may be one of the most significant changes in U.S. patent law provided by the America Invents Act, other provisions relating to patent validity, prosecution and litigation will also have significant effects, and will be discussed in later Gibbons P.C. postings.

Christopher H. Strate is an Associate in the Gibbons Intellectual Property Department.