IS IT FIRST INVENTOR TO FILE OR FIRST INVENTOR TO DISCLOSE?
The America Invents Act is often described as implementing a “First Inventor to File” patent system in the United States. However, there is at least one instance, under the America Invents Act, in which priority does not go to the “First Inventor to File” but rather to the “First inventor to Disclose”.
As an example, let’s say John Smith invented gadget A on April 1, 2013, and files for U.S. patent protection on June 1, 2013. Without any knowledge of John Smith’s invention, Bill Jones independently invents gadget A on May 1, 2013; publicly discloses a complete description of gadget A on May 2, 2013 in a U.S. national newspaper; and files for U.S. patent protection on August 1, 2013.
The “First Inventor to File” and the “First to Invent” in this case was John Smith.
Does that mean that John Smith will be awarded a U.S. patent over Bill Jones?
In this specific situation, it is not the “First Inventor to File” who wins but rather the “First Inventor to Disclose”.
How can this be?
Under 35 U.S.C. 102(a)(1) as provided by the America Invents Act:
“(a) Novelty; Prior Art. – A person shall be entitled to a patent unless –
(1) the claimed invented was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention; …” (35 U.S.C. 102(a)(1), in part).
In the above example, the public disclosure by Bill Jones, which is prior to the effective filing date of John Smith, prevents John Smith from getting a U.S. patent.
On the other hand, the public disclosure by Bill Jones does not prevent Bill Jones from getting a U.S. patent because of an exception under 35 U.S.C. 102(b) of the America Invents Act:
“(1) … A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or …” (35 U.S.C. 102(b), in part).
So does this mean that inventors should publicly disclose their invention before a U.S. filing?
Probably Not. In most foreign countries, if not all, public disclosure prior to filing results in loss of foreign patent filing rights. In addition, a non-inventor seeing a public disclosure may improperly try to file a U.S. patent application in their name resulting in confusion as to who the inventor is. Public disclosure, undesirably, starts a one year clock ticking for filing a U.S. patent application. These and other arguments suggest that filing a U.S. patent application before public disclosure is generally the best option.
However, the course of action to follow depends on the specific facts, and one should always consult with a patent attorney, such as Walter J. Tencza Jr., Esq., PATENTNOW.COM®