As discussed below, category 2 prior art represents a significant expansion of the prior art as compared to current law.
Though the above prior art framework under first-to-file is in some ways simpler and more predictable than under the current first-to-invent system, the exceptions to the definition of prior art complicate matters.
For category 2 prior art, the new law will also exclude disclosures appearing in previously filed U. In addition, common ownership need only exist as of the effective filing date rather than the date of invention (as under current law).
Partial Harmonization With Patent Laws of Other Countries and the Effective Date of Competitor's Patent Applications Claiming Foreign Priority Though the new first-to-file system will partially harmonize U. patent law with that of most other countries, the AIA creates some important distinctions. and PCT patent applications that are published or issued after the effective filing date of the claimed invention will be prior art for both novelty and obviousness purposes.
by another who has not abandoned, suppressed or concealed their invention may negate patentability (current 35 U. Similarly, avoiding first-to-file is no reason to file a patent application that is incomplete. Even under the first-to-invent system, it was always best to have the earliest possible filing date for your patent application.
In the case of any new applications you are contemplating filing in the near future, particularly those that have been developed to the point of being ready for filing, you should consider filing such applications by March 15. For new patent applications filed after March 15, an early filing date will be even more important as it will no longer be possible to overcome certain prior art by showing an earlier date of invention.
(Of course the earlier public disclosure by the inventor must not have been more than one year before the inventor's effective filing date.) This same exception also applies to disclosures appearing in issued U. Not only will such public disclosures prevent patenting in most other countries, which have no grace period, competitors will be free to exploit the disclosed invention until a patent is granted.
In addition, it is unclear how exception B will be interpreted and applied by courts and the USPTO.
For example, as noted above, the second inventor to file a patent application directed to subject matter described in an earlier-filed application by another may be entitled to a patent if that inventor publicly disclosed their invention before the earlier application was filed. or PCT patent application filed by another will be prior art as of its earliest filing date — which will include any applicable foreign priority filing date for the relevant subject matter. applicants will be deemed prior art as much as 12 to 18 months earlier than under current law (with no opportunity to swear behind such prior art by showing an earlier date of invention). In many other countries, on the other hand, such earlier filed applications may be used only for assessing novelty.
In most other countries, neither inventor would be able to obtain a patent in such a scenario. For example, a PCT application filed on May 1, 2013, which claims priority to an earlier application filed in Japan on May 1, 2012, will be prior art as of May 1, 2012 with respect to any subject matter that was also disclosed in the earlier Japanese patent application. Effective Filing Dates and Which Rules Apply As noted previously, the new first-to-file law will apply to a patent application that, at any time, 1) contains a claim having an effective filing date after March 15, 2013; or 2) claims priority to an earlier application that at any time included a claim having an effective filing date after March 15, 2013. § 102(g) does not commonly arise under the current law, and the AIA also limits its applicability only to the question of novelty.