Patent Reform Act of 2007 - Update (Part 5)
In an earlier post, the proposed new 35 U.S.C. § 103(a), set forth in the Patent Reform Act of 2007, was summarized. To illustrate how an obviousness analysis might be approached under the new § 103(a), assume I “invent or discover” a new invention on Day 1 in the U.S., reduce the invention to practice on Day 60, file a provisional patent application in the PTO on Day 80 (without any claims), and file a nonprovisional application on Day 250 (claiming the invention). Under this scenario, Day 80 could be my “effective filing date” even though the provisional application did not include any claims:
“The ‘effective filing date of a claimed invention' is--(1) the filing date of the patent or the application for patent containing the claim to the invention; or `(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.” See proposed new § 100(h).
However, if the invention is not adequately disclosed in the provisional application, my “effective filing date” could be Day 250.
It would appear, then, that, subject to the exceptions under proposed new section § 102(b) (see related post), any prior art available between Day 1 and Day 80 (or Day 250, as the case may be) could be used in an obviousness analysis by the PTO to reject my claims. In other words, under the new first-to-file system, I would not be able to swear behind prior art using evidence of an earlier conception and reduction to practice. Eligible prior art available between Day 1 and Day 80 (or Day 250) could include patents, printed publications, public uses, and sales of inventions. See new § 102(a).
Comments:
- Clearly the proposed new § 103(a) statutory framework encourages me to rush to the Patent Office to file a patent application as soon as possible after my invention/discovery on Day 1.
- It wouldn't be too much of a stretch to say that many organizational patent departments operate in a somewhat leisurely manner (or carefully and calculating, depending on your perspective) when it comes to processing invention disclosures. That's understandable, given that under the first-to-invent system currently in place in the U.S., there is no real urgency when it comes to submitting a patent application to the PTO (absent the need to protect the invention for foreign filing purposes, or if there is a current infringer in the market knocking off your invention). Invention disclosures will obviously need to be handled in a more expeditious manner under the first-to-file system.
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