In a race, it goes without saying that the first person to pass the finish line wins.  But, what would happen if the location of the finish line were suddenly moved back?  To a certain extent, that is exactly what has happened to U.S. patent applicants.  On March 16, 2013, the U.S. transitioned from a first-to-invent patent system to a first-to-file patent system.

Now imagine that in addition to the finish line being moved back, runners are told that the rules of the race have changed.  In particular, the bases for disqualification, say, false starts and inappropriate contact, have been modified.  In light of the new definition of “novelty” under U.S. patent law, it is as though both the location of the finish line has moved and the rules for running the race have been modified.

If innovators wish to remain competitive in the race to obtain patents, it is important to understand exactly where the finish line for patents is located and the types of activities that can disqualify an otherwise patentable invention.  Stated another way, it is essential for innovators to understand how the legal concept of novelty has been changed by new patent laws.

The Old Rules

In order to understand how the new law has changed the definition of novelty, it is useful to briefly review what the law used to be.  The following is a paraphrase of old 35 U.S.C. § 102(a), (b) and (e).[1]

A patent applicant’s invention is unpatentable if:

 

(a) Prior Art

Before the applicant invented the invention, someone else

(1) in the United States

(A) knew the invention, or

(B) used the invention, or

(2) in any country

(A) patented the invention, or

(B) described the invention in a printed publication.

 

(e) Patents and Patent Applications

Before the applicant invented the invention, someone else described it

(1) in a granted patent filed or deemed filed in the United States or

(2) in an application published under section 122(b)

 

(b) Statutory Bars

More than one year before the date of the U.S. patent application, anyone, including the applicant

(1)  in the United States

(A) publicly used the invention, or

(B) offered for sale or sold the invention, or

(2) in any country

(A) patented the invention, or

(B) described the invention in a printed publication.

 

As can be seen from this paraphrase, the types of references and activities that could destroy novelty under the old law were generally broken down into two categories.  The first category, called prior art, dealt with references, activities, or public knowledge that indicated someone else was first to come up with an invention.   Both subsections (a) and (e) dealt with prior art so they have been grouped together.

The second category of novelty-destroying activities under the old law involved something called a statutory bar.  A statutory bar was essentially a legal bar to getting a patent, even if the person seeking the patent was actually the first inventor.  For example, if anyone in the United States (including the inventor) publicly used, offered to sell, or sold the invention more than one year before the inventor filed a patent application, the invention was deemed non-novel.  Likewise, if anyone in any country (including the inventor) patented the invention or described the invention in a printed publication more than one year before the inventor filed for a patent application, the invention was non-novel.

Before moving on to the new law, it is worthwhile to note one more characteristic of the old law.  It defined prior art differently depending on whether it occurred in the U.S. or the rest of the world.  For example, the italicized passages in the previous paragraph draw attention to the fact that activities such as an offer to sell were only prior art if they happened in the U.S.  However, printed publications were prior art even if they were found in another country.

The New Rules

Having reviewed the old law on novelty, the next step is to examine the new law.  The following is a paraphrase of new 35 U.S.C. § 102.

A patent applicant’s invention is unpatentable if:

(a)(1) Disclosure

Before the applicant’s effective filing date, the claimed invention was:

(A) patented,

(B) described in a printed publication,

(C) in public use,

(D) on sale, or

(E) otherwise available to the public.

 

(2) Another Filed a Published or Patented Application First

(A) The claimed invention was described

(i) in a patent issued under section 151, or

(ii) in an application published or deemed published under section 122(b), and

(B) the patent or application

(i) names another inventor, and

(ii) was effectively filed before the effective filing date of the claimed invention.

 

 (b) Exceptions

(1) One-Year Grace Period

A disclosure by another under § 102(a)(1) is not prior art against an invention if the inventor files for a patent on the invention within one year of the disclosure, and

(A) the subject matter of the disclosure was derived directly or indirectly from the applicant, or

(B) the subject matter of the disclosure was previously directly or indirectly publicly disclosed by the applicant.

 

(2) Negating Disclosures Appearing in Applications and Patents

A disclosure under § 102(a)(2) is not prior art against an invention if

(A) the subject matter of the disclosure was derived, directly or indirectly, from the inventor,

(B) the subject matter of the disclosure was directly or indirectly publicly disclosed by the inventor before the effective filing date of the disclosure, or

(C) by the filing date of the claimed invention, both the subject matter of the disclosure and the claimed invention were owned or obligated to be assigned to same person.

 

Comparing the New Rules to the Old Rules

Structure

In comparing the old law and the new law, it is helpful to review their respective structures.  The old law was generally broken down into prior art and statutory bars, with a one year grace period applying to statutory bars.  The new law disposes of the distinction between prior art and statutory bars.  Instead, all disclosures that destroy novelty are now described in a single subsection, namely section 102(a)(1).  Furthermore, the one year grace period now applies to all of these disclosures.

First-to-File

Section 102(a)(2) of the new law determines priority between two applicants who file for a patent on the same invention.  Generally speaking, the first applicant to file will be entitled to a patent.  This is in keeping with the concept of transitioning from a first-to-invent to a first-to-file patent system.  While the old law generally focused on the date of invention, the new law generally references an inventor’s filing date.  Essentially, the finish line for winning a patent has been moved back.  Merely inventing something is no longer sufficient to win the race for a patent.  For the most part, a patent application must be filed.[2]

Prior Art

With respect to disclosures that destroy novelty, much of what constituted prior art or a statutory bar under the old law will still destroy novelty under the new law.  For example, patents, printed publications, public use, and offering to sell an invention are all prior art under the new law.  However, the geographic distinctions between prior art in the United States versus the rest of the world have been removed.  This means, for example, public use of an invention by someone besides the inventor in any country, not just the U.S., is considered prior art under the new law.  Likewise, if anyone, including the inventor, publicly uses the invention or offers to sell the invention in any country, not just the U.S., it is prior art.  These changes in the law broaden the scope of what constitutes prior art for U.S. patents.

Another potential change in the definition of prior art involves the term “known . . . by others in this country” in old section 102(a).  Under the new law, this phrase does not appear.  Instead, a new phrase, “otherwise available to the public”, appears in new section 102(a)(1).  On its face, it is unclear whether this new wording has left the scope of prior art unchanged, or made it broader or narrower.  Although the Federal Circuit has not directly addressed this issue, there is some evidence that all prior art under section 102(a)(1) must be “available to the public”. [3]  Given that the new law has only been in effect for about one year, the full impact of the phrase “otherwise available to the public” is still open to interpretation.

 

Grace Period

Although both the new section 102 and old section 102 have one year grace periods, the types of activity covered by the grace period have changed.  Under the old law, the grace period applied to statutory bars.  Under the new law, the grace period applies to all disclosures under section 102(a)(1), but only if the subject matter of the disclosure was derived from the inventor or was publicly disclosed by the inventor.  This suggests that one strategy for protecting inventions under the new law is to publicly disclose the invention before a competitor can do so.  Consequently, the new law might be more accurately described as a first-to-file-or-publicly-disclose system.

Nonetheless, there are several potential problems with the idea of trying to protect an invention by public disclosure.  First, the grace period offered by public disclosure only lasts for one year.  Ultimately a patent application will need to be filed to preserve priority.  Second, any application that is filed will need to be based upon the initial public disclosure.  If the initial public disclosure does not satisfy certain legal requirements, for example, enablement and written description, then the disclosure will be inadequate to support a patent application.  Third, even if the initial disclosure meets minimum requirements for a patent, if it hasn’t been drafted carefully and thoroughly, then any patent based on the initial disclosure will likely offer very little protection.  Finally, if another party files an application before the inventor, the inventor must bear the burden and expense of legally proving that the other party stole the invention or that the other party did not file until after the inventor publicly disclosed the idea.   In light of these complicating factors, publicly disclosing an invention to obtain patent priority is not generally recommended.

Record Keeping

Given that the new U.S. law is focused on application filing dates rather than the date of invention, it might be tempting to relax record-keeping standards for potentially patentable ideas.  This is strongly discouraged.  For example, if someone steals an invention before a patent application is filed, well-kept records will be invaluable for proving up theft.  In fact, the new law has a special proceeding for this very purpose.  It is called a derivation proceeding.  Given the potential need to prove or disprove evidence of derivation, meticulous record-keeping is still an important tool for protecting innovation.

Conclusion

In summary, changes to the definition of novelty have substantially affected the patent rights of U.S. applicants.  As between two inventors, the first to file, not the first to invent, will now win the race for a patent.  The two exceptions to this rule apply when one inventor is first to publicly disclose the invention or when one inventor has stolen the invention from another.  As a general matter, relying on these exceptions is not recommended.  Instead, it is a best practice for inventors to file a patent application as soon as it is practical to do so and before making any disclosure regarding their invention.  If a public disclosure does occur, an inventor might be able to take advantage of a one year grace period, but this is less than ideal.  Instead, winning the race to the patent office is typically a better strategy.