Archive for December, 2011

Tips on Transitioning to First-to-File

December 19, 2011

The U.S. patent system transitions from a first-to-invent to a first-to file regime on MARCH 16, 2013.  For patent applications filed after that date that include claims that do not have priority to an application filed prior to that date, inventors will no longer be able to rely on earlier inventive activity to pre-date prior art.  If you have been working on an invention for a year and someone else has been working on it for a week, if that person files an application one day before you, after March 16, 2013 you cannot get a patent.

During 2012, inventors should file applications for inventions they might otherwise feel are not ready for patenting.  This is good practice simply to be the magic date.  There will be a spike in application filing during the first quarter of 2013 to beat the March 16 deadline.

After March 16, 2013, inventors should file applications early and frequently during the invention process so that they do not lose the race to the patent office.  If a competitor files first, even by one day, there will be no patent for you.  Each time there is a significant improvement to the invention, a new application should be filed to prevent competitors from winning the race on the improvement as well.


Inventors will often file a quick provisional application before a public disclosure and then wait a year to file a full non-provisional application that includes sufficient detail to warrant a patent.  Under the first-to-file system, if the first provisional is not adequately supported and enabled, an intervening filing by a competitor may trump the first provisional.  That first provisional still has merit, but inventors should consider filing additional provisional applications as details of the invention are developed to prevent the harm from intervening applications.  Applicants will no longer be able to rely on inventive activity to pre-date prior art.


The new provisions seem to include a grace period once an inventor discloses the invention as long as an application is filed within one year of that disclosure.  Outside of the potential loss of foreign patent rights, applicants should also be aware that competitors may see the disclosure and develop alternative solutions to the problem the invention solves.  They could create prior art that may render the invention obvious.


America Invents Act: First-to-File Transition

December 14, 2011

The America Invents Act that was signed into law in September changes the US patent system from a first-to-invent to a first-to-file regime. 

The magic date for the transition is March 16, 2013.  A patent application that has at least one claim having an effective filing date after March 16, 2013 will be subject to the first-to-file provisions, while applications where all claims have an effective filing date prior to March 16, 2013 will be adjudged under the current first-to-invention system.  This means that we will be living under the dual regime for a long time, as divisional, continuation, and even some CIP applications where all claims have support in an earlier application, even if filed after March 16, 2013, will be subject to first-to-invent.  Non-provisionals claiming the benefit of earlier provisional applications filed beforet he magic date are subject to first-to-invent, provided the claims have support in the provisional.



Suppose A invents X on December 14, 2011 and B invents X on December 30, 2011; B files a patent application claiming X on March 23, 2012 and A files a patent application claiming X on April 1, 2012.  Under the first-to-invent system, if A was diligent in reducing X to practice and can prove prior invention, A will prevail over B in an interference proceeding and be awarded the patent.


If we change the dates of the above, we will change the result.

Suppose A invents X on December 14, 2012 and B invents X on December 30, 2012; B files a patent application claiming X on March 23, 2013 and A files a patent application claiming X on April 1, 2013.  Under the first-to-file system, B will prevail over A because B filed a patent application claiming X before A.

Transition Timing Paradox

Mark Lemley, law professor at Stanford Law School, has pointed out yet another situation that could be problematic.

Suppose A invents X in September 2012 and B invents X in December 2012.  B files a patent application claiming X in February 2013 and A files a patent application claiming X in May 2013.

It would seem that A cannot get a patent because he filed after March 16, 2013 and is thus subject to the first-to-file rules.  He wasn’t the first to file. 

B is subject to the first-to-invent rules because he filed before March 16, 2013.  B was not, however, the first to invent.  Thus, it seems that B cannot get a patent.

Did Congress really intend for situations like this where no one can get a patent?

Cert. Petition in Gene Patent Case

December 8, 2011

As expected, the ACLU filed a petition asking the Supreme Court to review the Myriad case.  The petitioners raise two questions in their brief.

1. Are human genes patentable?

2. Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad’s “active enforcement” of its patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally and directly threatened with an infringement action?

The strange things about the petition are that the first question is the ACLU’s attempt to get cute about the case. 

The second is that the petitioners won on the second question when they probably shouldn’t have.  The only plaintiff to have standing saw lost his standing while the case was on appeal.  The Supreme Court should probably dismiss the case as moot.

We now await Myriad’s response before seeing whether the Supreme Court will wade into this case.

A copy of the petition is available here.

Litigation Update

December 2, 2011

In the midst of all of the discussions about Patent Reform and changes at the Federal Circuit, there are a number of cases working their way through the courts that could have profound impact on patent law.

Supreme Court

Caraco Pharm. v. Novo Nordisk is scheduled for argument next week on Monday and concerns pharmaceutical litigation under the Hatch-Waxman Act.  The issue in the case is whether a generic manufacturer that is sued for infringement by a brand-name manufacturer may file a counterclaim that the information on the patent listed with the FDA does not accurately and precisely claim the method of use claimed in the patent.  The counterclaim would require the brand-name manufacturer to correct or delete the incorrectly listed information.

Mayo v. Prometheus is scheduled for argument next week on Wednesday and concerns patentable subject matter under § 101.  The Federal Circuit has twice confirmed the patentability of the claims; now the Supreme Court will weigh in.

Kappos v. Hyatt is scheduled for argument on January 9.  This case concerns an issue of civil procedure under the Patent Act.  When a patent applicant is finally rejected by the USPTO (through a decision of the Board of Appeals), he has a decision of whether to appeal the case to the Federal Circuit or to sue the PTO Director in district court.  The issue in this case is whether when the applicant choses district court, he is entitled to introduce new evidence that was not presented to the PTO and whether the district court can review the evidence de novo or whether it must give deference to PTO decisions.

Saint-Gobain v. Siemens Med.:  The Supreme Court has requested input from the Solictor General on whether it should hear the appeal in this case.  This case concerns the standards for infringement under the doctrine of equivalents and whether they present a conflict with the rule of obviousness.  Can a patent be granted by the PTO as non-obvious over particular prior art while the invention embodied in the patent infringes that prior art under the doctrine of equivalents because the differences are insubstantial?  The Federal Circuit issued a number of sharp opinions in its denial to rehear the case en banc.  These type of situations often cause the Supreme Court to review these cases.  The Solicitor’s opinion will also carry weight with the Court.

Association for Molecular Pathology v. USPTO (Myriad):  The ACLU has announced an intention to file a cert. petition in this case that concerns the patentability of isolated gene patents and associated methods.  The Federal Circuit denied rehearing in September, which sets a December 12 due date for the cert. petition, unless an extention is granted.

Federal Circuit

En banc arguments were held in Akamai Techs. v. Limelight Networks and McKesson Techs. v. Epic Sys. on November 18.  The issue in these cases that were consolidated for review by the court is the proper standard for infringement of a multi-step process when the steps are performed by different parties.  The court has made it extremely difficult to prove infringement in such cases, leading patent attorneys to carefully prepare patent claims directed at a single infringing entity.

Other Cases

The Supreme Court may have petitions regarding patentable subject matter in several other cases to consider as well, including Classen v. Biogen and CyberSource v. Retail Decisions.

Finally, several other cases will be decided by the Federal Circuit in the coming months that will determine proper PTO procedure for claim interpretation during examination, affirming rejections on appeal, procedures for reissue applications, and multiple reexaminations, among other things.

Thanks to Hal Wegner for his list of important cases.