First Inventor to File

The AIA converted the US from first-to-invent to first-inventor-to-file: PRE-AIA (FIRST-TO-INVENT): the US was the only major patent system that awarded patents to the first inventor, not the first filer; a party could establish earlier inventive date through corroborated lab notebooks, witnesses, and reduction-to-practice evidence; priority disputes resolved by 'interference' proceedings before the Board of Patent Appeals and Interferences (BPAI); 'swearing behind' prior art was possible — if an inventor proved they invented before a prior art reference date, the reference could be removed; AIA (AMERICA INVENTS ACT — FIRST-INVENTOR-TO-FILE): enacted September 16, 2011; effective for applications with ANY claim having effective filing date on or after March 16, 2013; the patent goes to the first inventor to FILE, not the first to invent; no more swearing behind — prior art with date before effective filing date is prior art, period; exceptions: (1) inventor's own disclosures within 12 months of filing (grace period); (2) disclosures made by others after the inventor's own prior disclosure within 12 months; KEY CHANGES SUMMARIZED: interference proceedings → derivation proceedings; 35 U.S.C. § 102 completely rewritten; § 103 simplified; first-to-invent evidentiary practice eliminated; TRANSITION PERIOD: applications filed before March 16, 2013 still governed by pre-AIA law; applications with ALL claims having effective date before March 16, 2013 = pre-AIA; applications with ANY claim having effective date on or after March 16, 2013 = AIA; mixed applications are complex — different rules may apply to different claims.

The AIA retained a grace period but with different scope than pre-AIA: AIA GRACE PERIOD (35 U.S.C. § 102(b)(1)): a disclosure made 1 year or less before the effective filing date is NOT prior art against the claimed invention IF: (a) the disclosure was made BY THE INVENTOR or joint inventor; or (b) the disclosure was made by ANOTHER who obtained the subject matter from the inventor; INVENTOR-DERIVED DISCLOSURE EXCEPTION: if the inventor publicly discloses their invention and then someone else files on the same invention based on that disclosure, the follower's application is not prior art because the disclosure originated from the inventor; this prevents 'patent thicket' scenarios where third parties rush to patent other inventors' disclosures; CRITICAL LIMITATION: the grace period only protects the inventor's own disclosures; THIRD-PARTY DISCLOSURES outside the grace period ARE prior art, regardless of whether the inventor invented first; PRE-AIA vs. AIA GRACE PERIOD: pre-AIA: 12-month grace period for any public use/sale/disclosure by anyone (§ 102(b)); AIA: 12-month grace period ONLY for inventor's own disclosures; third-party disclosures always constitute prior art under AIA (no grace period for third-party disclosures); PRACTICAL IMPACT: under AIA, if a third party independently discloses the same invention before your filing date, it is prior art even if you invented first; first-to-file creates urgency to file early; PUBLICATION BEFORE FILING: inventors sometimes publish first to establish grace period protection; establishes that any subsequent third-party disclosures cannot be used as prior art (because they originated from the inventor's publication date or later); WARNING: publication before filing forfeits patent rights in most foreign countries (absolute novelty countries); typically: file first, then publish.

Derivation proceedings are the AIA's replacement for pre-AIA interference proceedings: PRE-AIA INTERFERENCES: occurred when two or more applications claimed the same invention; determined who actually invented first using corroborated evidence (notebooks, witnesses, public disclosure dates); labor-intensive and expensive (2-5+ years); DERIVATION PROCEEDINGS (AIA § 135): address a narrower scenario: did the applicant derive the invention from another inventor?; premise: under first-inventor-to-file, the second filer can still win if the first filer derived the invention from them; WHEN DERIVATION APPLIES: an inventor files for a patent; another party later files for a patent claiming substantially the same invention; the later filer (the true inventor) believes the earlier filer derived the invention from them; FILING A DERIVATION PETITION: must be filed within 1 year of publication of the earlier-filed application; must show: (1) an earlier public disclosure by the petitioner; and (2) the contested claims are derived from the petitioner; PTAB conducts the proceeding; WHAT DERIVATION RESOLVES: cancels or modifies claims of the application/patent derived from the true inventor; awards rights to the true first inventor; NARROW SCOPE vs. INTERFERENCE: derivation is narrow — only addresses situations of actual copying/derivation from the true inventor; does not resolve simultaneous independent invention disputes; PRACTICAL FREQUENCY: derivation proceedings are rare; most disputes involve timing of filing, not derivation; INTERACTION WITH INEQUITABLE CONDUCT: if derivation is proven, the derived patent may be unenforceable for inequitable conduct (filing by non-inventor is a basis for invalidity).

First-inventor-to-file fundamentally changed filing strategy urgency: FILE EARLY — THE CORE IMPERATIVE: under first-to-invent, careful documentation of invention date could protect against a later filer; under first-inventor-to-file, the first to file wins — documentation of invention date is irrelevant for priority (except derivation claims); FILE BEFORE DISCLOSING: any public disclosure before filing (even by the inventor) starts the 12-month grace period clock; foreign rights are generally forfeited by any disclosure before filing (most countries have no grace period); best practice: file BEFORE any public disclosure; PROVISIONAL APPLICATIONS AS RACING TOOL: file a provisional quickly to establish a filing date; the provisional costs less and has lower formality requirements; then have 12 months to file a complete non-provisional claiming the provisional's priority date; WHEN A COMPETITOR IS CLOSE: if you know a competitor is working on similar technology, file early even with incomplete prosecution; add continuation applications as the technology develops; CORROBORATION NOTEBOOKS ARE NOW LESS CRITICAL: pre-AIA: detailed lab notebooks, witnessed and notarized, were essential for interference; AIA: lab notebooks are less important for priority (still useful for other purposes: ownership disputes; trade secret cases; derivation proceedings); PRIOR USER RIGHTS EXPANSION (AIA § 273): the AIA expanded prior user rights; a business that commercially used a process or machine secretly for at least 1 year before the effective filing date of a patent can continue that use; this creates an alternative to patenting for certain manufacturing processes; MULTI-INVENTOR COLLABORATION: under AIA, collaborative inventions need clear documentation of who contributed to which claims for proper inventorship; inventorship errors are more complex in collaborative environments.

The AIA completely rewrote § 102, fundamentally changing what constitutes prior art: AIA § 102(a)(1) — ABSOLUTE PRIOR ART: a claimed invention is anticipated if 'patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date'; the 'otherwise available to the public' language is broader than pre-AIA; covers any publicly available disclosure (online posts, conference presentations, product releases); AIA § 102(a)(2) — PATENT/APPLICATION PRIOR ART: a claimed invention is anticipated by a US patent or published application that was effectively filed before the claimed invention's effective filing date; this is the new secret prior art provision; an earlier-filed application is prior art from its filing date (even before publication); AIA § 102(b)(1) — GRACE PERIOD EXCEPTIONS: removes from prior art disclosures by the inventor within 12 months; removes disclosures by others that originated from the inventor; AIA § 102(b)(2) — COMMON OWNERSHIP EXCEPTIONS: prior art under § 102(a)(2) does not apply if: the subject matter and the claim were commonly owned at the effective filing date; or if a joint research agreement covered both; this is the COMMONLY OWNED EXCEPTION — prevents an internal company publication or application from being prior art against a related application; PRE-AIA vs. AIA PRIOR ART KEY DIFFERENCES: pre-AIA § 102(a): prior art requires 'known or used by others in this country, or patented or described in a printed publication in this or a foreign country'; AIA: 'otherwise available to the public' is broader; pre-AIA § 102(b): 12-month grace period for all public disclosures (inventor or anyone); AIA § 102(b)(1): only inventor's own disclosures get the grace period; pre-AIA § 102(g): first-to-invent priority for interference purposes; AIA: no equivalent (derivation only); pre-AIA secret prior art from US applications only; AIA § 102(a)(2): secret prior art from US AND PCT national phase applications.