On March 16, United States Patent Law changes from a “first to invent” system to a “first to file” system. In the past, if two parties were claiming the same invention, the first inventor was awarded the patent. After March 16, the first to file a patent application will be awarded the patent.
HOWEVER INVENTORS BEWARE: do not throw away your research notebooks. Your date of invention will continue to be vitally important in many circumstances. You must continue to preserve evidence of your conception of invention, your reduction to practice of the invention, and your diligence in proceeding from conception to reduction to practice.
While that evidence won’t help you if you face another party who is claiming the same invention and has filed before you, it will help you in the event you are claiming a different invention from that disclosed but NOT claimed in a patent or published application filed prior to yours, but not published more than one year prior to your filing date. The same is true with respect to a non-patent publication published prior to your filing date, but not more than one year prior.
You can eliminate any such reference as prior art, by proving that you invented your invention prior to the filing date of the earlier patent or patent publication, or prior to the publication date of a non-patent publication. Further if the matter is ever litigated, you may find yourself having to prove that you invented prior to the date of invention of the cited prior patent, published application or publication. Prior invention which is not abandoned, suppressed or concealed can be prior art against your patent, even though not claimed in a prior patent.
There is a difference between an interference with the patent of another which claims the same invention as your patent application, versus dealing with a prior filed published patent application or issued patent, or a prior publication, which is cited against you as prior art for disclosing the invention you claim, even though it does not actually claim the invention you claim. In the interfering situation, the first to file is awarded the patent. In the cited prior art situation, you can eliminate the reference by proving a date of invention which is prior, again assuming it does not have a publication date more than one year prior to your filing date.
Conclusion: Save those research notebooks, continue to keep proof of your date of conception, your date of reduction to practice, and your diligence in proceeding from conception to reduction.
ABOUT THE AUTHOR: James Mitchell, BSc Chemistry, Michigan Tech, JD Law University of Michigan, is the Chairman of Mitchell Intellectual Property Law. He has experience in all phases of intellectual property law, including patent, trademark, copyright and unfair competition litigation. He has litigated numerous patent, copyright and trademark cases and has taught Trademark Law to Federal Judges on behalf of the Judicial Conference Center and the Intellectual Property Law Institute.