2014 Issue

21 P ATENT LAW IN the United States is as old as the ratification of the U.S. Constitution. The Patent Act of 1790 was the first patent-related statute enacted in the U.S. During this era, the first patent examiner was Thomas Jefferson; a notable inventor and scientist himself. With all this history and longevity, codified pat- ent law within the U.S. has been through relatively little change since the founding of the nation. One of the most significant changes occurred relatively recently in the 1950s, when the framework of modern-day patent law was codified. The most significant change in U.S. patent law in this century was with the enactment of the Leahy-Smith America Invents Act (AIA) 1 . The AIA was enacted in an attempt to harmonize U.S. patent law with other countries’ patent laws. The U.S. has, since the ratification of the U.S. Constitution, been a peculiar nation in that it functioned under a first-to-invent filing system where the first person to conceive and reduce to practice a new and useful process, ma- chine, manufacture, and compositions of matter, or any new or useful improvement thereof was considered to have prior rights over any other individual. These rights existed regardless of whether another patent applicant filed before the inventor did. Canada and the Philippines were the only other nations that shared this type of patent system. A first-inventor-to-file patent regime pro- vides superior rights to the first inventor to file a patent application at the U.S. Patent and Trademark Office (USPTO) in situations where a subsequent and competing party seeks patent rights in the same invention. This theoretically means that invention can occur more than one time in the history of the world. Other countries merely require a first applicant to file, but the applicant does not necessarily have to be the inventor(s). The AIA still requires that the inventors be listed in the patent application, and sign formal documents to accompany the filing of the patent application. All provisions within the AIA have been implemented; the final round of provisions being implemented onMarch 16, 2013. This article is written to assist in understanding the AIA, and how its provisions will influence how you protect your intellectual property, and the technologies that are createdby any companies, organizations, and universities to which you are affiliated. DISCLOSURE OF THE INVENTION Public disclosure generally precludes an individual from obtaining patent rights on the subject matter disclosed. Before the enactment of the AIA, an applicant could disclose his or her invention a year or less before filing a patent application, and still have his or her disclosure not act as prior art against obtainment of a patent. This act of disclosure meant an applicant could not seek patent protection in foreign countries, because all other countries require abso- lute novelty; this is a patent doctrine that requires that an invention must not have beenmade available to the public bymeans of a written description or through use of the invention before the date a patent ap- plication was filed. Under absolute novelty requirements, any act that makes an inven- tion available to the public anywhere in the world before the filing date or priority date of the patent application has the effect of barring the invention from being patented. Any such activities in any language, and in any country in the world, would create an absolute bar to obtaining patent rights. In light of this significant change, public disclosure of your invention through pub- lication of technical papers, marketing en- deavors, and so on may, in some situations, be advantageous if you know you will not be seeking patent rights in other countries. Assuming this strategy, the first-inventor- to-file system provides that disclosure of the invention by a first individual prevents a second individual fromobtainingprior rights even if that second individual files a patent application first. At the same time, however, it is always best to retain your ability to file foreign patent applications. The very best practice will therefore con- tinue to be always filing a patent application, utility or provisional, before there is any public disclosure of the invention, either Modern Patent Law for Engineers MODERN PATENT LAW | continued on page 22 1 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be codified in scattered sections of 35 U.S.C.), available at www.uspto.gov/aia_implementation/bills-112hr1249enr.pdf. By Brian J. Riddle and Jeffrey K. Riddle, Van Cott, Bagley, Comwall & McCarthy, P.C.