In just over a month and a half, mid-March, two big changes — First to File and the USPTO Fee Adjustment — will shape the future of patent prosecution practice. Oddly, the Patent Office scheduled the change in fees three days after the American Invents Act’s last phase comes into effect on March 16, 2013.
First to File is becoming the law of the land for patents. In addition to granting the patent to the “first inventor to file,” the new rules have a number of other effects.
For the purposes of which law to apply, any case that “ever contains a claim that has an effective filing date on or after March 16, 2013” will be evaluated under the new rules. This means that you should consider very carefully the scope of your claims if you are converting a provisional application which was filed prior to March 16, 2013.
Some of the more important other effects include the expansion of the definition of prior art, to encompass foreign art.
Also, barring actions, such as sales, will also include foreign activity.
It is not clear whether the one year grace period, which does remain for the inventor’s own actions, applies to anything that does not include a “disclosure” of the invention. For example, would a sale or offer for sale that is private be barring? It appears from the language of the act that it would be, since the conditions which would block a patent include the claimed invention being “on sale,” while the exception is only for “disclosures.” The Patent Office has stated that they interpret disclosure as a generic term intended to encompass the documents and activities enumerated in AIA 35 U.S.C. 102(a).”
Furthermore, the Patent Office’s interpretation of the exceptions under 35 USC 102(b)(1)(B) are limited to “identical subject matter disclosed by the third party.” Thus, while nominally the grace period remains, it is only applicable for the inventor’s precise disclosure, and reprints of the same. For example, imagine an inventor that posted an article about their invention in a blog post, prior to filing the application. A blogger posted a link to the article and added an aspect that was not disclosed (e.g. “This could be implemented in way XYZ”). The Patent Office makes very clear that this aspect, e.g. the implementation detail added by the non-inventor blogger would be barred from being claimed as novel, even if the inventor had it in mind but did not include it in the article. Furthermore, potentially the entire disclosure could be removed from the grace period.
In addition to the First to File rules, starting March 16, 2013 (Saturday), the new fees will start on March 19, 2013 (Tuesday).
The new fees will increase second and subsequent RCE fees by $770, to $1700, and will increase the fee for the first RCE by $270 to $1200. The filing fee for a utility patent will also be increased to a total of $1600, while excess claim fees will be increased to $420/$80. National stage entry fees will also be increased, but only by $340, to $1480.
On a practical note, this appears to mean that if the client wishes to file in the PCT, it would be more cost effective to file directly in the PCT, and enter the US through the national phase. It also appears that it may be worthwhile to file a continuation, rather than a second or later RCE, especially given the recent change in priority handling of RCEs.