04 March 2011

Could the US Really Move to 'First-to-File'?

As many readers will be aware, a Bill to reform the US patent system is currently being considered in the United States Senate.  Recently renamed the 'America Invents Act', the proposed amendments to the US Patent Code most controversially include a change from the current system of 'first-to-invent' to a 'first-to-file' (or, more correctly, 'first-inventor-to-file') system, which is the basis for patent entitlement throughout most of the rest of the world.

The first-to-file amendments include a change to the novelty provisions in section 102 of the US Patent Code that would alter the existing 'grace period' from a potential exclusion of all prior art arising within the 12-month period preceding filing, to an exclusion of only that prior art arising directly or indirectly from the inventor's own disclosures.  This would effectively result in a grace period having similar effect to that which currently exists in a number of 'first-to-file' countries, including Australia.

Our use of 'potential exclusion' in the preceding paragraph is significant.  It seems often to be forgotten that the existing 12-month 'grace period' is predicated on the first-to-invent principle.  That is, you can only overcome the prior disclosure of another party during the 12-month period if you are able to 'put you hand on your heart' and swear that you had made the invention before that disclosure occurred.  In certain circumstances, you might also be required to prove this.

There has been substantial and vocal opposition to the change to a first-to-file system from a number of groups within the US, most notably those purporting to represent the interests of individual inventors, small businesses and startup ventures.

As a result, on Thursday 3 March 2011 the US Senate debated a proposed amendment to the patent reform bill offered by Senator Diane Feinstein (D-CA) relating to the removal of first-to-file provisions.  Following the debate, a vote was taken, with the result of 87-13 against the proposal.

The Feinstein Amendment therefore appears to be dead, and there is now a very real prospect that the Bill will be passed in the US Senate with the first-to-file provisions intact.

This would still have to make it through Congress, but there now appears to be real momentum, and undoubtedly bipartisan support for these reforms.  Could we be seeing history in the making here?


Courtenay Brinckerhoff said...

I'm still a skeptic that it will ever get passed, but it is making more progress than it has for years. My concern is that any substantive change to Section 102 will lead to a period of uncertainty until we have a new body of case law to guide its interpretation and application.

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