First to File Implementation
Under the America Invents Act (AIA), the U.S. patent laws were amended to: (1) convert the U.S. patent system from a “first to invent” system to a “first inventor to file” system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be “in this country” to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. § 102, as well as 35 U.S.C. § 103. To achieve these objectives, the U.S. Patent and Trademark Office (USPTO) released final rules to implement the first to file provisions of the America Invents Act (AIA) (78 Fed. Reg. 11,024 (2013)).
According to the rules, nonprovisional applications filed after March 15, 2013 that contain, or contained at any time, a claim having an effective filing date after March 15, 2013 are subject to the first to file rules. If an application is filed after March 15, 2013 claiming the benefit of an earlier filing date and the application contains at least one claim that is not entitled to the earlier filing date, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage in an international application, 16 months from the filing date of the prior-filed application or the date that a first claim having an effective filing date on or after March 16, 2013 is presented in the application.
In applications claiming foreign priority, a certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application or 16 months from the filing date of the prior foreign application, according to the rules. However, this requirement does not apply under certain conditions specified in the rules. A “good cause” exception is provided in the rules for a belated certified copy of the foreign application.
The rules further provide that when any claim of an application is rejected in view of a disclosure that has a prior art date less than one year before the effective filing date of the application, the applicant or patent owner may submit an affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by an inventor or that the subject matter disclosed was obtained directly or indirectly from the inventor.
An applicant may also submit an affidavit or declaration to disqualify a prior art disclosure by establishing that the disclosed subject matter had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor if such public disclosure is less than one year prior to the filing date of the application. The affidavit or declaration must identify the subject matter publicly disclosed and provide the date of the public disclosure of such subject matter. If the disclosure was in a printed publication the affidavit or declaration must be accompanied by a copy of the printed publication.
If a rejection is based upon a U.S. patent or U.S. patent application publication having an effective filing date less than one year before the subject application of a patented or pending application naming another inventor, the patent or pending application claims an invention that is the same or substantially the same as the applicant’s claimed invention and an affidavit or declaration is submitted that contends that an inventor named in the patent or patent application publication derived the claimed invention from the inventor or a joint inventor named in the application, an applicant would have to file a petition for a derivation proceeding to overcome the prior art.
The USPTO also released a new fee schedule pursuant to the fee setting authority granted by the America Invents Act (AIA) (78 Fed. Reg. 4212 (2013)). Most of the new fees are effective March 19, 2013. The fees will provide the USPTO with a sufficient amount of aggregate revenue to recover its aggregate cost of patent operations, while helping the USPTO implement a sustainable funding model, reduce the application backlog, decrease pendency, improve patent quality and upgrade the USPTO’s information technology capability and infrastructure. In order to spur innovation and access to the patent examination process, the total of the routine fees to obtain a patent (i.e., filing, search, examination, publication and issue fees) will decrease. On the other hand, back-end fees, such as maintenance fees, will increase. Fees for extensions of time, excess claims and application size will increase. Small entity and micro entity applicants will benefit from 50 percent and 75 percent fee reductions, respectively, for most fees.
According to the new fee schedule, the basic filing, search and examination fees for a utility application will increase from $1,260 to $1,600. However, the pre-grant publication and issue fees will decrease from $2,070 to $960. First-, second- and third-stage maintenance fees will rise from $1,150, $2,900 and $4,810 to $1,600, $3,600 and $7,400, respectively.
Fees for appeals and post-grant procedures will change significantly. The fee for filing a notice of appeal increases from $630 to $800, but there is no fee for filing an appeal brief. Rather, $2,000 is charged upon the mailing of an examiner’s answer. Therefore, there is no additional fee charged if the USPTO reopens prosecution, as frequently occurs, after filing an appeal brief. The fee for requesting supplemental examination will decrease from $5,140 to $4,400, and the cost of the subsequent ex parte reexamination decreases from $16,120 to $12,100. Likewise, the filing fee for an ex parte reexamination decreases from $17,750 to $12,000. An inter partes review request for up to 20 claims will cost $9000. If an inter partes review is granted there will be an additional charge of $14,000 for review of up to 15 claims. Likewise, post-grant review and business method post-grant review requests will cost $12,000 for up to 20 claims and an additional $18,000 for review of up to 15 claims if the review is granted. Additional claims can be reviewed by payment of applicable excess claim fees.
Under the new fee schedule, the USPTO will offer small and micro entity fees for filing and searching PCT international applications effective January 14, 2014.
A notable fee being eliminated under the new fee schedule is the $40 fee for recording an assignment if the assignment is submitted electronically.
Practice Note: To avoid the prior art implications of first to file, applicants should file new patent applications not claiming priority to earlier filed applications by March 15, 2013.© 2013 McDermott Will & Emery