First Inventor to File Patent System

1. R O B I N H A T H A W A Y
M I C H A E L M A U L E
D A N I E L O ’ N E I L L
T Y N I K A S T E V E N S
C H A R L O T T E W E L C H
M E L I S S A W O O L F R E Y
First Inventor to File
Patent System

2. What is a Patent?
 Constitution of the United States
“Congress shall have the power…to promote
the progress of science and useful arts by
securing for limited times to authors and
inventors the exclusive right to their respective
writings and discoveries.”
(Article 1, Section 8, clause 8)

3. Governing of Patent Laws
 World Trade Organization (WTO)
 oversees international trade
 Trade Related Aspects of Intellectual Property
Rights (TRIPS)
 align laws among participating countries
 The America Invents Act – March 16, 2013

4. First to Invent Patent System
 Awarded to first person to invent. Gives inventor 20
years to market their product.
 Requirements:
 Verifiable documentation with invention date.
 Diligent Pursuit and Reduction to Practice.
 Non-abandonment and Fair Play.
 Can be very cumbersome to manage.
 Advantage to American inventors.
 The heart of the system was to encourage new and
independent inventors.

5. First Inventor to File Patent System
 Became effective March 16th 2013.
 Aligns the US system with other countries
around the world.
 A patentable invention is now granted to
the inventor that files for the patent first.

6. Additions & Changes
 One year grace period
 Provisional patents available
 Prior commercial use is now expanded to include
processes, machines, manufactured items, and
compositions of matter that may be used in
manufacturing or commercial processes (Dever,
Cirrincione, & Czajkowski, n.d.).
 Prior art includes inventions previously patented,
included in a technical paper, publically known
about or used (Forbes, 2012).

7. Trial Provisions
 INTER PARTES REVIEW examines the validity of a patent based
solely on prior art.
 POST GRANT REVIEW is used when there are one or more claims
in regard to patentability.
 EX PARTE REEXAMINATION is used when there is substantial
new question of patentability.
 SUPPLEMENTAL EXAMINATION allows a patent owner to correct
errors on their patent.
 DERIVATION PROCEEDINGS are used when there is evidence that
the first filer copied his idea from the second filer.

8. Effects on Small vs. Large Companies
 Large companies will benefit and small companies
will continue to try and compete, possibly seeing
negative effects.
 Creates a “race to the patent office”.
 Larger companies have patent attorneys and more
funding to navigate through the system.
 Single inventors and small companies need to budget
for filing.

9. Effects on Small vs. Large Companies
 An advantage for small companies is a reduction in
fees and a faster filing process in the new system.
 The patent office plans to hire up to 2,000 more
examiners and to upgrade their technology.
 Now patents can be expected to be accepted or
rejected within a year.
 Both small and large companies now have the option
to pay a fee to hasten the process, and small
companies have a discounted rate.

10. Effects on Small vs. Large Companies
 New filing system will potentially cause less disputes.
 Under the old law, an inventor could challenge another
inventor of the same product for ownership of the patent,
dependent on who invented the product first.
 Double edged sword for small companies and single inventors
because the filing system is quicker and less costly, but if they
don’t have the funding to file immediately, a larger company
can step in and file before them. Under the new law, the small
company will not be able to dispute who invented the product
unless the larger company stole their invention.
 Again, it comes down to funding and resources.

11. International Implications
 Patent Cooperation Treaty (PCT)
 Helps applicants seeking international patent protection
 Helps patent Offices with their patent granting decisions
 Facilitates public access to a wealth of technical information
relating to those inventions
 “One application for 148 countries”

12. International Implications
 Prior to AIA
 A legal entity would be named as the applicant for all PCT
States except the U.S.
 Inventors would be named as both inventors and applicants
 For the U.S., the inventors, and not the legal entity, would be
indicated as applicants
 The inventors were required to be named as the applicants in
order to comply with United States patent law
 After AIA
 The restriction on applicancy in the US was removed
 The assignee can be named as the applicant for a U.S. patent

13. Before AIA After AIA
 An international patent
application with the PCT
had four check boxes:
1) Applicant for all designated
states
2) Applicant for all designated
states except the U.S.
3) Applicant for the U.S. only
4) Applicant for the states
listed in the supplemental
box
 There are only 2 choices:
1) Applicant for all
designated states
2) Applicant for the states
listed in the supplemental
box
International Patent Application

14. Unique U.S. Requirements
 One year grace period provided to inventors for
public disclosure
 Other countries have an “absolute novelty standard”
 Absolute novelty: all material made available to the public
anywhere in the world forms part of the state of the art
 For a one year period after the public disclosure of an
invention, public disclosures and patent applications
filed by others for the same invention are not
considered to be prior art

15. Innovation
 Better solutions that meet new
requirements, articulate needs, or existing
market needs.
 The act of introducing something new.
 New idea, method, or device.

16. 1st to Invent 1st Inventor to File
 Independent inventor
created a new invention in
2010.
 ABC company created the
same invention in 2012 and
filed for a patent in 2013.
 Independent inventor has
the opportunity to show
proof that he/she invented
the item first.
 Independent inventor has
the right to the patent.
 Independent inventor
created a new invention in
2010.
 ABC company separately
created the same invention
in 2012 and filed for a
patent in 2013.
 ABC company has the right
to the patent.
Effects on Innovation

17. Apple vs. Samsung
 Apple invented Pinch-to-Zoom (P2Z) technology in
2007.
 Apple launched an iPhone with the new P2Z
technology.
 Samsung launched the Galaxy phone with the same
P2Z features.
 Samsung filed for a patent in 2012 for the P2Z
feature.

18. 1st to Invent 1st Inventor to File
 Apple has the right to
the patent.
 Apple then sued
Samsung for
infringement.
 Apple’s use of the P2Z
feature qualifies as
prior art and bars
Samsung from
obtaining the patent.
 Apple has the right to
the patent.
Apple vs. Samsung

19. Anticipated Benefits of the FITF System
“These new AIA provisions now in effect give us
tools to deliver cutting-edge technologies to the
marketplace sooner, further reducing the backlog of
patent applications, and getting high quality patents
issued faster… that will translate into opportunity,
growth, and jobs for large and small innovators
across America.”
- David Kappos, Director of USPTO
(“Historic Patent Reform,” 2012)

20. References
Dever, M.L., Cirrincione, C.R., & Czajkowski, S.D. (n.d.). Retrieved from
http://www.pghtech.org/news-and-publications/teq/
article.aspx?Article=2111.
Forbes Leadership Forum. (2012). A Powerful New Weapon Against
Patent Trolls. Retrieved from http://www.forbes.com/sites/
forbesleadershipforum/2012/11/15/a-powerful-new-weapon-
against-patent-trolls/.
Historic Patent Reform Implemented by the U.S. Patent and Trademark
Office. (2012). Retrieved from http://www.uspto.gov/news/pr/
2012/12-59.jsp.
Ozluturk, F., Kimmelblatt, B., & Patel, A. (2013). [Kindle Edition].
Retrieved from Amazon.com.