With the Thursday, April 14, vote of the Judiciary Committee of the House of Representatives in favor of the America Invents Act (Patent Reform Act of 2011), House bill HR 1249, US patent law reform moves forward. This markup fails to deal, however, with an issue that was overlooked in the Senate bill. There may still be an opportunity for amendment when the House bill and the Senate bill S. 23 are reconciled
It has been said that “swearing- back” will no longer be required under the new US first-to-file legislation. Well, actually, this proposed law is not a classic first-to-file system. This new law, as pending both before the House and as passed by the U.S. Senate is a “first-file-or-publish” system. But some background fundamentals must be addressed first, before dealing with the subtleties of this new concept and the survival of swearing-back practices.
Under the new law, even if you are a first inventor in the worldwide sense, if someone else publishes your invention in such a way as to make it available to the public, in any manner, anywhere in the world, and does so before you have filed a patent application yourself for the United States, then it will be too late to obtain a US patent. This may seem hard on inventors, but the new law reflects the policy that patents are issued in exchange for the disclosure of the idea of an invention. If someone else has already disclosed an invention publicly, then you’ve got nothing left to bargain with that would justify your obtaining a US patent. That’s the gist of the new law.
Even your own public disclosure can count against you, whether you disclose something yourself or someone else who learns about the invention from you makes the disclosure. This will occur if you allow more than one year to pass. However, your own prefiling public disclosures, whether released by yourself or by others who learn about the idea from you, will not count against you so long as you file within one year from the first of such disclosures.
Note, if you rely upon this one year applicant-originating grace period, you are running the risk that an independent source will publish your invention before you file. That would terminate your right to obtain a patent. But if your idea hasn’t been publicly disclosed by anyone else before you file, and if you yourself didn’t disclose your own idea for more than a year prior to your filing date, you can still proceed to obtain a US patent. That’s all part of the new law.
Opportunity for swearing back
Well, in this context, where does “swearing-back” come in? Swearing-back under the existing first-to-invent law deals with the case where someone else has published your invention in the year before you’ve made your US application. The patent examiner is interested in knowing whether you were a first inventor or a second inventor. If you were a second inventor, then your application would be refused.
You are therefore asked to “swear-back” of at least the publication date that has come to the examiner’s attention. The degree of evidence you have to provide demonstrating when you had made your invention has varied over time. Sometimes a merely declaration with the little detail has been accepted by examiners. On other occasions, a degree of supplemental evidence in the form of exhibits has been required.
It has been said that swearing-back will no longer be required under the new law. But this is not true. Senate bill S. 23 as well as HR 1249 both deal with competing applications in the same manner. First we can deal with the situation where two applicants file applications containing conflicting disclosures.
Two applications containing conflicting disclosures
If the later-filing applicant attempts to claim what is disclosed in the earlier application, or anything that is obvious in view of what was disclosed in the earlier application, then the second application will be barred, subject to the exceptions which will now be addressed. (In reading the section below, Subsection (a)(2) stipulates that the first-to-file will normally prevail).
Both bills before Congress contain the following provisions:
102 Conditions for patentability; novelty
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;
Here’s the effect of these two exceptions (A) (B).
Shelter from derived prior filings
Subsection 102(b)(2)(A) shelters an applicant from his own ideas when someone else files an earlier application which incorporates knowledge of the invention which was derived from the other second-to-file party. Since this issue of “derivation” may be contentious, section 135 specifically allows an administrative body, the Patent Trial and Appeal Board, to hold proceedings under Section 135 and rule on whether a derivation has occurred.
Shelter from independent prior filings
Subsection 102(b)(2)(B) shelters an applicant who is later to file from a disclosure made by an independent inventor in an earlier-filed application if:
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor (or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor);
This means that an applicant can effectively achieve a filing date that will prevail in the case of conflicting applications for the same invention by having “publicly disclosed” the subject matter that otherwise would be prejudicial and would count against him in the equivalent to a classic Interference Proceeding. This effective filing date is obtained by having “publicly disclosed” the subject matter of an invention.
This is an extraordinary provision for which there is no precedent in any patent law around the world. Additionally, no one is commenting on this provision. It’s been swept-up under the rubric “first-to-file”. It’s even being ignored, or neglected, by commentators who are analyzing the derivation provisions of the exceptions to novelty requirements under section 102(b), but not this feature.
This section 102(b)(2)(B) will have the effect of keeping swearing-back alive and well under the new US patent law system. It will have to happen this way:
Example of swearing-back - prior competing filings
A person who is second to file, having been preceded by an independent inventor who filed first, will be able to show that the subject matter in the earlier-filed application that is prejudicial had been “publicly disclosed” by the applicant who filed later. If this is done, then what was publicly disclosed will be subtracted from the disclosure of the earlier filed application thereby reducing its barring effect. This is equivalent to swearing-back.
Example of swearing-back - prior public disclosures
A parallel procedure will arise in respect to public disclosures made by independent parties prior to an applicant’s filing date that would otherwise qualify as prior art. Exceptions provided by Sections 102(b)(1)(A) and (B) parallel those reproduced above for conflicting applications. Again, an examiner citing a prefiling public disclosure by a third-party will have to give the applicant an opportunity to show either that the cited disclosure was derived from the applicant, or that the applicant had publicly disclosed the subject matter prior to the date of the cited disclosure. In this way the prior public disclosure will be removed as a prior publication bar.
Concerned parties to the issue
Of these two proceedings, the last one described relating to prior public disclosures is essentially an ex-party exercise. Exchanges on the issue will occur only between the applicant and an examiner. But the competing filings case, when there are two conflicting applications, will involve two equally interested parties: the first and second applicants.
If an examiner were to cite an earlier application against a later filing, and if the second-to-file applicant responds by producing evidence of having himself previously publicly disclosed the subject matter being relied on as prior art at an earlier date than the first applicant’s filing date, then the examiner will have to withdraw any refusal based upon such subject matter. But having received evidence that such subject matter was previously publicly disclosed, the examiner will have an obligation to present evidence of such public disclosure to the party who filed the first application. Such public disclosure may count as a prior art bar against the first to file applicant.
Now we have a situation where the first party to file is having his application challenged based on an allegation made by the second-to-file applicant that the latter applicant had published first. This is not an ex parte situation.
Resolution of two-party disputes
Under section 135, the Patent Trial and Appeal Board will have jurisdiction to decide whether or not a person who files first in respect of two competing applications had derived knowledge of the invention from the later filing applicant. This board will have jurisdiction as follows:
(a) Institution of Proceeding- An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. Any such petition may be filed only within the 1-year period beginning the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.
(b) Determination by Patent Trial and Appeal Board- In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.
The same board should also have jurisdiction to resolve whether the second to file applicant had previously publicly disclosed the subject matter claimed in the second application in such a way as to exclude parallel content in the first application from qualifying as prior art. Equally, the board should have jurisdiction to decide whether the first applicant should have his patent application rejected based upon a prior publication by the second applicant. A similar section to the above section to resolve such issues could be provided as follows:
(a) Institution of Proceeding- An applicant for patent may file a petition to institute a public disclosure proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in a later application either has or has not publicly disclosed subject matter contained in an earlier application in accordance with Subsection 102(b)(2)(B). Any such petition shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a public disclosure proceeding are met, the Director may institute a public disclosure proceeding. The determination by the Director whether to institute a public disclosure proceeding shall be final and nonappealable.
(b) Determination by Patent Trial and Appeal Board- In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in a later application either has or has not publicly disclosed subject matter contained in an earlier application.
Amendment to final legislation
This issue should be addressed before this legislation is finalized.