File early, file often to accommodate changes in U.S. patent law

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As part of our ongoing series examining the ecosystem necessary to bring technology to market, David French, a senior Canadian patent attorney with 35 years of experience, explores impending changes in U.S. patent law and how these will impact how technology companies must manage their patents to protect their Intellectual Property.

By David French

In about 18 months, U.S. patent law will undergo its most dramatic change since 1952, possibly since 1836. These changes will have an effect on Canadian businesses who seek to obtain U.S. patents, but those changes are not so profound as to require a significant departure from good practice under Canadian law. Nevertheless, it’s important for anyone managing patents to appreciate the significance of these coming changes.

The new, proposed U.S. patent law

This new legislation has been promoted as introducing first-to-file criteria into U.S. patent law for granting patents. It does, indeed, do that.

But the patenting requirements of the new law extend far beyond the first-to-file requirement. The first-to-file requirement simply addresses the situation where competing applications are filed for the same invention. The new law will introduce the concept of “absolute world novelty” as a limit to the grant of a U.S. patent. And, the law will add further novelty limitations which should be appreciated by Canadian businesses who wish to preserve their U.S. patent rights.

You might think your idea is new, but great minds often hit upon the same idea. Many an inventor has been disappointed to learn that their invention has already been thought of, and disclosed to the public, by someone else.

What does this mean to Canadians?

The structure of the novelty requirements of this new law are complex. They can be viewed with extended commentary at www.canadapatentblog.com. The more interesting concern for Canadian businesses is how they will affect patenting for those seeking patent coverage in the U.S.

Essentially, there will not be much change in how Canadians should behave if they are already complying with the standards of the Canadian patent law. Since 1989 Canada has been on a first-to-file system, combined with absolute world novelty. This has meant that, to maximize protection of inventions in Canada, at least one initial patent filing should be made before an invention concept is made available to the public in any way. This means limiting disclosures to those under a duty of confidentiality before any patent filing is made.

As an inventive idea matures and more variants are conceived, further filings should be made. At the end of one year from the first filing, all of these disclosures must then be consolidated into a single, final, patent application to be used for all countries in the world where protection will be sought.

This process can be summarized as “file early, file often.”

Under the new law when it comes into effect, a U.S. patent will also be judged on the basis of absolute world novelty. This is a standard that applies in Europe and many other major countries in the world. This means that any public disclosure of the invention prior to that initial filing will count against a U.S. patent application if the disclosure has been made by someone other than the applicant. That filing date can be established by making an initial patent application anywhere in the world.

The new U.S. law, following the precedent of the law adopted by Canada in 1989, will excuse pre-filing disclosures originating from an applicant for up to one year. But to any inventor who relies on this one-year grace period: Beware! You will lose your rights in Europe and other countries that maintain a strict absolute world novelty standard if you disclose your own invention before filing an initial patent application at least somewhere. (That filing date will count in Europe etc. if used within one year.) This is because these jurisdictions do not grant a one-year grace period in the absence of an initial patent filing.

And if you rely on this one-year grace period by delaying a filing after you publicly disclose your invention, you will lose your patent rights in Canada if someone else, an independent inventor, publicly discloses his/your invention before you have filed a patent application.

So far, the described procedures which are suitable for Canada and Europe will also work for the United States under the new U.S. law. However, unlike Canada and Europe, this new U.S. law will go further. It will bar a U.S. filing in every case where a stranger has offered the invention for sale anywhere or has arranged for the public use of the invention anywhere prior to an applicant’s initial filing date. In respect of these two additional novelty bars in the United States, there need not even be a clear public disclosure. A simple public use or offer for sale will terminate the right of others to file for a patent.

Inventors will have up to one year to file after making their own disclosures. Thereafter an applicant’s own offers for sale or public use of the invention will count against any U.S. filing made once the one-year grace period has expired. But prefiling offers for sale and public use by strangers will be immediately fatal to obtaining a patent. These bars will apply even where the invention has been kept confidential. This is not the present U.S. law as it applies to Canadians.

Under the present U.S. law, no attention is paid to offers for sale or any public use of an invention that has occurred outside of the U.S. It is only a description of an invention in a printed publication, or an electronic equivalent, that has world scope in barring the grant of a U.S. patent. Therefore Canadian applicants will be worse off under the new law than they were before.

This is a limitation, a trap, which Canadians have not had to live with previously. This is why the policy of every Canadian patent applicant should be: file early, file often.

What should you do?

To maximize the prospects for obtaining valid U.S. patent rights, a Canadian applicant should file an application as soon as possible after an invention is understood and then, within the one year that is allowed, file a supplemental final application that contains necessary corrections and all additional information established in respect of the invention during the “priority” year. Multiple filings are allowed during the priority year as new concepts are conceived. The final application at year end should consolidate all of these new ideas.

Once an earlier filing has been made, the final application filed before the end of the priority year will not be prejudiced by the public disclosure of anything that has been previously described in the earlier patent filing. This will permit offers for sale to occur as well as any form of public use or publicity that the patent applicant may wish to pursue during this priority year. But it is essential that anything disclosed be addressed in a previously filed patent application.

Summary

In summary, the best way to proceed is to file early and file often. Conveniently, this rule will also serve applicants well in respect of obtaining not only Canadian patent rights, but obtaining patent rights elsewhere around the world beyond the U.S.

David French is the principal and CEO of Second Counsel Services, which provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit www.SecondCounsel.com.

David French would like to form a discussion group in Ottawa, an Entrepreneurs Forum where people can discuss Intellectual Property issues relating to business startups. If you are interested in participating, please e-mail David.French at secondcounsel.com

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