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First To Invent, First To File, Or First To Disclose? Patent Reform's Real Incentive

Dec 14, 2011
J. Mark Bledsoe and Jake Neu

Because the America Invents Act gives university researchers an incentive to publish quickly, corporate inventors, especially those in fastmoving fields such as biotech or software, need to create an efficient invention disclosure system to push new inventions from the lab to the USPTO quickly.

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Many commentators call the Leahy-Smith America Invents Act (AIA) the biggest reform of the United States patent laws in almost 60 years. The AIA's most publicized and dramatic change transforms the first-to-invent system to a "modified" first-to-file system which becomes effective on March 16, 2013. Why "modified"? Because in order to accommodate the "publishor- perish" model of research institutions, legislators defined prior art in the AIA in a manner that allows inventors to publish first and seek patents later by preserving the one-year grace period granted to enabling publications. The ultimate result, however, is a new patent system that differs in key ways from international first-to-file rules and creates disclosure and filing incentives which are at odds with both pure first-to-file and first-to-invent systems.

In particular, (i) inventors who delay filing can lose valuable patents even if they are the first to file and (ii) parties that initially disclose their inventions through publication may not fully anticipate subsequently disclosed inventions, which lessens the desired prior art blocking protection.

Second to Invent, Second to File, But Entitled to the Patent?

Consider this scenario. Two parties, Research University (Research U) and BigCo Corporation (BigCo), are each pursuing research for a cancer vaccine during the period April through June, 2013:

  • On April 1, 2013, BigCo's research team discovers an amazing new compound that effectively inoculates women from breast cancer.
  • On April 10, 2013, a scientist at Research U makes the same discovery, just in time to present her work at a major academic conference on cancer research on April 15.
  • On April 15, 2013, the Research U scientist discloses the compound to a stunned crowd at the conference and publishes her work.
  • On May 1, 2013, BigCo completes its internal patent review process (including a draft patent application) and submits its final patent application on that date.
  • On June 1, 2013, Research U completes and submits its patent application for the same compound.

Under the outgoing first-to-invent system, BigCo would be entitled to the patent because BigCo invented the subject matter first. Assuming BigCo had the evidence to prove prior invention, it could submit an affidavit to the USPTO to that effect (a so-called "swearing behind" action based on Research U's conference disclosure) or it could file an interference proceeding with the USPTO. Assuming all of the other requirements for patentability were met, BigCo would be able to secure the patent because nothing in the prior art anticipated BigCo's discovery.

More than likely, under a true first-to-file patent system, no one would receive a patent. In a true first-to-file system, most public disclosures qualify as prior art, including disclosures by the filing party. For example, the European Patent Office (EPO) has limited exceptions for disclosures made less than six months before filing that either breach a confidentiality provision or were made by the filing party at an officially recognized international exhibition.

In Japan, a disclosure is not considered prior art if it is made within six months before filing and consists of (i) conducting experiments related to the invention; (ii) the inventor's publication in print,

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