Redefining Prior Art Under Proposed Patent Reform Measures

Adopting an 'Absolute' Bar

The Act also adopts an absolute bar to patentability when 'the claimed invention was patented, described in a printed publication, in public use, or on sale'before the effective filing date of the claimed invention.' [Proposed 35 U.S.C. '102 (a)(1)(A) (note S. 1145 includes the language 'otherwise available to the public').]

Until now, a series of 'statutory bars' allowing a one-year grace period governed some aspects of patentability. [Current 35 U.S.C. '102(b)-(d).] Under current 35 U.S.C. '102(b), patentability would be lost if more than one year before the patent application filing date 'the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country. ” This provision is eliminated in the Act, although much of its effect is subsumed under the proposed absolute bar. But note that the one-year grace period is largely removed.

By way of example, under the new absolute bar:

Inventor A conceives and reduces to practice the inventive method on Day 1 and does not immediately file a patent application.

Inventor B independently develops the same inventive method on Day 2. But, instead of filing a patent, Inventor B publishes a description of the invention on the Internet on Day 3 prior to Inventor A filing a patent application.

Inventor A then files a patent application on the invention on Day 4.

Inventor B's prior publication acts as an absolute bar preventing Inventor A from obtaining a patent. This is so even though the publication took place just one day prior to the filing for a patent by Inventor A. Under current law, this would not be the case, unless inventor B published more than one year prior to inventor A's patent filing. It is this grace period that the proposed legislation is removing.

There is an important exception, however, in the proposed legislation. The Act retains a limited one-year grace period if the inventor himself, or others obtaining 'the subject matter disclosed'from the inventor,' disclose the invention to the public. [Proposed 35 U.S.C. '102 (a)(1)(B) and 102 (b)(1).] For example, the inventor's own publication, use or sale ' or publication, use or sale of a product derived from the inventor's work ' would still not prevent patentability until the one-year grace period had passed. Using our example:

Inventor A conceives and reduces to practice an inventive method on Day 1 and does not immediately file a patent application. Instead, Inventor A publishes a description of his own invention on the Internet on Day 2.

Inventor B again independently develops the same inventive method on Day 3 and publishes a description of the invention on the Internet on Day 4 prior to Inventor A filing a patent application.

Inventor A then files a patent application on the invention on Day 5.

Under these circumstances, Inventor A has one year to file a patent application, despite his publication. In other words, the grace period is retained in instances in which an inventor publishes a description of his own work.

Note that the grace period negates the prohibitive effects of later publication by another. Because of Inventor A's prior public disclosure, Inventor B's publication no longer automatically prevents Inventor A from obtaining a patent. Inventor A now has one year from his own disclosure to file a patent application despite Inventor B's public disclosures.

Of important note, even with publication, an independent inventor's published prior patent application would still negate Inventor A's right to a patent. [Proposed 35 U.S.C. '102 (a)(2).] Using the example again:

Inventor A conceives and reduces to practice an inventive method on Day 1 and does not immediately file a patent application, but immediately publishes a description of his own invention on the Internet on Day 2.

Inventor B independently develops the same inventive method on Day 3, but now immediately files a patent application on the invention on Day 4.

Inventor A then files a patent application on the invention on Day 5.

Inventor B's application is published after 18 months.

Neither inventor is entitled to a patent. Under the proposed rules, the grace period does not apply to Inventor B because Inventor B did not, and indeed could not, publish a description of the invention prior to Inventor A's publication. Inventor A's prior public disclosure thus prevents Inventor B's patent application from issuing as a patent. But, that does not entitle Inventor A in this case to a patent. Because Inventor B's patent application with an earlier filing date is published at 18 months, the published application prevents Inventor A from obtaining a patent on the invention. It makes no difference that Inventor B's published application will not issue as a patent.

In addition to the limited one-year grace period, there are additional limited prior art exceptions for joint inventors, disclosure of wrongfully derived information, and commonly assigned inventions. [Proposed 35 U.S.C. '102 (b)(2)(A-C).]

Other Existing Statutory Bars

The proposed absolute bar provides a bright-line definition of prior art while retaining many aspects of the current provisions. For example, the Act retains limitations on prior public use, sale, and publication. [Current 35 U.S.C. '102 (a) (prohibiting patent if invention was 'known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.').] Presumably courts and practitioners may thus continue to rely on much of the substantial body of law relating to prior art, though absent a legislative note to that effect, a challenge to the applicability of such case law can be expected.

The Senate version of the Act includes an additional catch-all provision: information 'otherwise available to the public' to 'clarify the broad scope of the relevant prior art.' [Proposed 35 U.S.C. '102 (a)(1) in S. 1145; Jan. 24, 2008 Senate Report on S.1145 at 9.] The meaning of this catch-all is unclear and, if included in the final Act, will undoubtedly require judicial interpretation.

The proposed absolute bar also appears to broaden the scope of the prior art. For example, limitations such as the current geographic limitation on public use and sale are eliminated. The Act also largely eliminates the existing one-year grace period.

The remaining, and little-used statutory bars, under 35 U.S.C.
'102(c) and (d,) are also excluded from the Act. 35 U.S.C. '102(c) states that an inventor cannot get a patent if 'he has abandoned the invention.' This does not require abandoning the invention itself, but refers to abandoning the pursuit of patent protection for the invention. For example, an inventor can expressly abandon an invention by dedicating it to the public. [See MPEP 2134.] Also, the inventor may abandon the invention through action by allowing others to practice the invention without restriction. [In re Gibbs, 437 F.2d 486 (CCPA 1971) (intent can be implied from the inventor's conduct with respect to the invention).] Note that both examples could still result in an absolute bar to patentability under the Act depending on the circumstances.

Current 35 U.S.C. '102(d) generally applies to foreign entities filing a patent application in a foreign country prior to filing in the U.S. If a foreign application is filed and issues as a patent prior to application in the U.S. and the foreign application was filed more than 12 months before the U.S. application, no U.S. patent can be obtained. Most countries publish applications after 18 months. [i.e., European Patent Convention, Article 93.] Given this fact and the one-year limited grace period for inventor publications, the Act effectively extends the window for domestic filing after a foreign application from 12 months to 30 months.

Remaining Prior Art Sections Now Unnecessary or Redundant

Also eliminated under the Act is 35 U.S.C. ' 102(c), which refuses a patent grant when the alleged inventor did not actually invent the claimed invention. [Current 35 U.S.C. ' 102 (f).] Arguably, this provision was redundant given Section 101, limiting patent grants to '[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter. ' '

Also gone is 35 U.S.C. '102(g), which precludes a patent if the invention was invented, before applicant's invention, by others who had not 'abandoned, suppressed, or concealed it.' This is another aspect of the first-to-invent system under existing law that awards patent priority to the first in time inventor as opposed to the first inventor to file an actual patent application. With the elimination of the first-to-invent system, this provision is no longer necessary.

The elimination of prior invention by another as prior art had originally been softened somewhat in the House version of the Act by expanding an existing prior use defense. [Proposed 35 U.S.C. '273 in July 18, 2007, mark-up of H.R. 1908.] This proposed section was eliminated entirely during consideration by the full House. [Sept. 7, 2007, markup of H. R. 1908.] The Senate version still expands the defense by allowing affiliates of the prior user, in certain circumstances, to assert the defense as it currently exists. [Proposed 35 U.S.C. '273 in S. 1145.]

Other Changes Affecting Prior Art

Disputes Regarding Inventorship

Current 35 U.S.C. '102(g)(1) also governs potential invention date priority disputes in the U.S. Patent Office ' interference proceedings. [Current 35 U.S.C. '135.] Given the move to a first-to-file system, such disputes no longer matter. But, if disputes regarding who invented the subject matter of a patent ' derivation disputes ' do arise, the Act introduces 'Derivation Proceedings' whereby an applicant can challenge another patent or application on the basis that another applicant derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention. [Proposed 35 U.S.C. '135.]

Getting Prior Art Before
The Patent Office

The Act also contemplates a series of mechanisms by which prior art may be submitted to the Patent Office ' both during prosecution and after issuance. These mechanisms are directed toward increasing the quality of the patents issued by the U.S. Patent Office.

One mechanism in both bills concerns submissions by the applicant regarding the scope of the prior art at the time of application. [Proposed 35 U.S.C. '123.] Another mechanism, found only in the House bill, expands third-party submissions of prior art to the Patent Office during prosecution. [Proposed 35 U.S.C. '01 in H.R. 1908.]

Still another such mechanism in the House Bill authorizes the U.S. Patent Office to require applicants to submit 'a search report and other information and analysis relevant to patentability.' [Proposed 35 U.S.C. '123 in H.R. 1908.] Similar search reports are already required under an accelerated examination procedure currently in place in the U.S. Patent Office. [MPEP 708.02(a).] An exception is made, exempting small companies and individuals from this requirement. In the Senate version, the search report is mandatory subject to the same micro-entity exemption. [Proposed 35 U.S.C. '123 in S. 1145.]

Third parties are also allowed to submit prior art and a 'concise description of the asserted relevance of each submitted document' for either 6 months after publication of an application or until the date of the first rejection, whichever occurs later. [Proposed 35 U.S.C. '122 (e)(2)(a).] The Notice of Allowance acts as a cut-off for third-party prior art submissions.

The most important new mechanism is a provision regarding post-grant oppositions, which would allow challengers, within a certain window of time, to oppose issued patents in the Patent Office. The specifics regarding the window are hotly contested. After amendments, the respective bills now diverge on this topic. In the House version, a third-party may file a 'Petition for Cancellation ' not later than 12 months after the grant of the patent or issuance of a reissue patent.' [Proposed 35 U.S.C. '321-322 in H.R. 1908.] Note also that the petition cannot be based upon a best mode argument. [Proposed 35 U.S.C. '24 (2) in H.R. 1908.]

The Senate version contemplates an additional second window of filing within 12 months of notice alleging infringement if the third-party can show that the continued existence of the challenged claim is likely to cause 'significant economic harm.' [Proposed 35 U.S.C. ' 321-322 in S. 1145.] Opponents of the bill argue that the standard for filing in the second window is set so low that the window will almost always be open, subjecting patents to a continuous assault in the U.S. Patent Office from would-be infringers.

How Are Prior Art Changes Going to Be Implemented?

The amended House bill 'shall apply to all applications for patent that are filed on or after the effective date.' [Proposed 35 U.S.C. '102 in H.R. 1908 (Section 3 (k)(2)).] Thus, the House bill would apply to any patent application filed, as opposed to patent issued, after a certain date. The proposed language fails to use term 'effective filing date' defined in the Act as including priority claims. [See proposed 35 U.S.C. '100 in H.R. 1908 (Section 3 (h)(2)).] It is thus unclear from the proposed language whether the U.S. Patent Office and the courts will consider claims of priority when determining whether to apply the existing first-to-invent system or the proposed first-to-file system. This could lead to a situation in which a parent application issues as a patent based upon the existing first-to-invent rules, but a continuation application is rejected under the proposed first-to-file rules.

The amended House bill also conditions enactment of the changes to 35 U.S.C. '102 on Europe and Japan's adoption of legislation enacting a congruous one-year grace period to the absolute bar for disclosures originating with the inventor. [Proposed 35 U.S.C. '102 in H.R. 1908 (Section 3 (k)(1)(A)-(2)(A)).] There is no indication, however, that either Europe or Japan has formally contemplated, let alone proposed, such legislation. Thus, under the House bill it is unclear when, if ever, the proposed shift to a first-to-file system would be enacted.

No such condition precedent is included in the Senate bill. The Senate bill states that the provisions would become effective 12 months after enactment of the Act and apply to 'any patent issued on or after the effective date.' [S. 1145 Section 17.] Because issued patents are exempted from the Act, the U.S. Patent Office and the courts would still have to apply the current first-to-invent provisions for years to come in litigation and reexamination. Moreover, unlike the House version, any pending applications in the U.S. Patent Office at the time of the switch to a first-to-file system could face a new body of prior art laws, potentially requiring further examination. The average pendency of patent applications
in 2007 was 32 months. [http://www.uspto.gov/go/com/annual/2007/50304_table4.html] By way of example, if the Senate Bill passed in June of 2008 and became effective for pending applications in June 2009, a patent application filed in January 2007 (having undergone 2.5 years of prosecution under the first-to-invent system) would find itself suddenly subject to a new set of prior art rules.

Should the Act pass, it is unclear if Congress will provide further guidance regarding the logistics of implementing a first-to-file system or leave such implementation details to the U.S. Patent Office.

Conclusion

Both the House and Senate versions of the Patent Reform Act of 2007 contain significant changes guaranteed to impact the U.S. patent system. Hotly contested provisions in both bills remain, but there has been widespread support for the switch to the first-to-file system and the underlying changes to prior art provisions. While it may be unclear if the current incarnation of the Act will pass, it appears that the time is ripe for the United States to shed the last vestiges of the first-to-invent system and embrace otherwise global paradigms for patentability. This shift alone will have a fundamental impact on the practice of patent law.

This is the second installment of a two-part series on the proposed move from a patent system granting priority of patent rights based upon invention dates to a system in which priority is based primarily upon filing dates. The first installment discussed the history behind the current first-to-invent system and the basics of the proposed changes to the system. This installment explores the statutory bars under the proposed legislation and other changes affecting prior art.

The Shift to a First-to-File System

In Part 1 of this article, we discussed the shift to a first-to-file system under the 2007 Patent Reform Act by changing, among other provisions, the first-to-invent provision contained in current 35 U.S.C. '102(e). That provision currently states that no patent will be granted if 'the invention was described in ' [a published] application for patent ' [or] a patent granted on an application for patent by another filed in the United States before the invention by the applicant. … ' The new '102 first-to-file provision abandons references to invention dates, instead focusing on filing dates: no patent will be granted when 'the claimed invention was described in a patent ' or in an application for patent published ' [that] names another inventor and was effectively filed before the effective filing date of the claimed invention.' [Proposed 35 U.S.C. '102 (a)(2).]

Adopting an 'Absolute' Bar

The Act also adopts an absolute bar to patentability when 'the claimed invention was patented, described in a printed publication, in public use, or on sale'before the effective filing date of the claimed invention.' [Proposed 35 U.S.C. '102 (a)(1)(A) (note S. 1145 includes the language 'otherwise available to the public').]

Until now, a series of 'statutory bars' allowing a one-year grace period governed some aspects of patentability. [Current 35 U.S.C. '102(b)-(d).] Under current 35 U.S.C. '102(b), patentability would be lost if more than one year before the patent application filing date 'the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country. ” This provision is eliminated in the Act, although much of its effect is subsumed under the proposed absolute bar. But note that the one-year grace period is largely removed.

By way of example, under the new absolute bar:

Inventor A conceives and reduces to practice the inventive method on Day 1 and does not immediately file a patent application.

Inventor B independently develops the same inventive method on Day 2. But, instead of filing a patent, Inventor B publishes a description of the invention on the Internet on Day 3 prior to Inventor A filing a patent application.

Inventor A then files a patent application on the invention on Day 4.

Inventor B's prior publication acts as an absolute bar preventing Inventor A from obtaining a patent. This is so even though the publication took place just one day prior to the filing for a patent by Inventor A. Under current law, this would not be the case, unless inventor B published more than one year prior to inventor A's patent filing. It is this grace period that the proposed legislation is removing.

There is an important exception, however, in the proposed legislation. The Act retains a limited one-year grace period if the inventor himself, or others obtaining 'the subject matter disclosed'from the inventor,' disclose the invention to the public. [Proposed 35 U.S.C. '102 (a)(1)(B) and 102 (b)(1).] For example, the inventor's own publication, use or sale ' or publication, use or sale of a product derived from the inventor's work ' would still not prevent patentability until the one-year grace period had passed. Using our example:

Inventor A conceives and reduces to practice an inventive method on Day 1 and does not immediately file a patent application. Instead, Inventor A publishes a description of his own invention on the Internet on Day 2.

Inventor B again independently develops the same inventive method on Day 3 and publishes a description of the invention on the Internet on Day 4 prior to Inventor A filing a patent application.

Inventor A then files a patent application on the invention on Day 5.

Under these circumstances, Inventor A has one year to file a patent application, despite his publication. In other words, the grace period is retained in instances in which an inventor publishes a description of his own work.

Note that the grace period negates the prohibitive effects of later publication by another. Because of Inventor A's prior public disclosure, Inventor B's publication no longer automatically prevents Inventor A from obtaining a patent. Inventor A now has one year from his own disclosure to file a patent application despite Inventor B's public disclosures.

Of important note, even with publication, an independent inventor's published prior patent application would still negate Inventor A's right to a patent. [Proposed 35 U.S.C. '102 (a)(2).] Using the example again:

Inventor A conceives and reduces to practice an inventive method on Day 1 and does not immediately file a patent application, but immediately publishes a description of his own invention on the Internet on Day 2.

Inventor B independently develops the same inventive method on Day 3, but now immediately files a patent application on the invention on Day 4.

Inventor A then files a patent application on the invention on Day 5.

Inventor B's application is published after 18 months.

Neither inventor is entitled to a patent. Under the proposed rules, the grace period does not apply to Inventor B because Inventor B did not, and indeed could not, publish a description of the invention prior to Inventor A's publication. Inventor A's prior public disclosure thus prevents Inventor B's patent application from issuing as a patent. But, that does not entitle Inventor A in this case to a patent. Because Inventor B's patent application with an earlier filing date is published at 18 months, the published application prevents Inventor A from obtaining a patent on the invention. It makes no difference that Inventor B's published application will not issue as a patent.

In addition to the limited one-year grace period, there are additional limited prior art exceptions for joint inventors, disclosure of wrongfully derived information, and commonly assigned inventions. [Proposed 35 U.S.C. '102 (b)(2)(A-C).]

Other Existing Statutory Bars

The proposed absolute bar provides a bright-line definition of prior art while retaining many aspects of the current provisions. For example, the Act retains limitations on prior public use, sale, and publication. [Current 35 U.S.C. '102 (a) (prohibiting patent if invention was 'known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.').] Presumably courts and practitioners may thus continue to rely on much of the substantial body of law relating to prior art, though absent a legislative note to that effect, a challenge to the applicability of such case law can be expected.

The Senate version of the Act includes an additional catch-all provision: information 'otherwise available to the public' to 'clarify the broad scope of the relevant prior art.' [Proposed 35 U.S.C. '102 (a)(1) in S. 1145; Jan. 24, 2008 Senate Report on S.1145 at 9.] The meaning of this catch-all is unclear and, if included in the final Act, will undoubtedly require judicial interpretation.

The proposed absolute bar also appears to broaden the scope of the prior art. For example, limitations such as the current geographic limitation on public use and sale are eliminated. The Act also largely eliminates the existing one-year grace period.

The remaining, and little-used statutory bars, under 35 U.S.C.
'102(c) and (d,) are also excluded from the Act. 35 U.S.C. '102(c) states that an inventor cannot get a patent if 'he has abandoned the invention.' This does not require abandoning the invention itself, but refers to abandoning the pursuit of patent protection for the invention. For example, an inventor can expressly abandon an invention by dedicating it to the public. [See MPEP 2134.] Also, the inventor may abandon the invention through action by allowing others to practice the invention without restriction. [In re Gibbs, 437 F.2d 486 (CCPA 1971) (intent can be implied from the inventor's conduct with respect to the invention).] Note that both examples could still result in an absolute bar to patentability under the Act depending on the circumstances.

Current 35 U.S.C. '102(d) generally applies to foreign entities filing a patent application in a foreign country prior to filing in the U.S. If a foreign application is filed and issues as a patent prior to application in the U.S. and the foreign application was filed more than 12 months before the U.S. application, no U.S. patent can be obtained. Most countries publish applications after 18 months. [i.e., European Patent Convention, Article 93.] Given this fact and the one-year limited grace period for inventor publications, the Act effectively extends the window for domestic filing after a foreign application from 12 months to 30 months.

Remaining Prior Art Sections Now Unnecessary or Redundant

Also eliminated under the Act is 35 U.S.C. ' 102(c), which refuses a patent grant when the alleged inventor did not actually invent the claimed invention. [Current 35 U.S.C. ' 102 (f).] Arguably, this provision was redundant given Section 101, limiting patent grants to '[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter. ' '

Also gone is 35 U.S.C. '102(g), which precludes a patent if the invention was invented, before applicant's invention, by others who had not 'abandoned, suppressed, or concealed it.' This is another aspect of the first-to-invent system under existing law that awards patent priority to the first in time inventor as opposed to the first inventor to file an actual patent application. With the elimination of the first-to-invent system, this provision is no longer necessary.

The elimination of prior invention by another as prior art had originally been softened somewhat in the House version of the Act by expanding an existing prior use defense. [Proposed 35 U.S.C. '273 in July 18, 2007, mark-up of H.R. 1908.] This proposed section was eliminated entirely during consideration by the full House. [Sept. 7, 2007, markup of H. R. 1908.] The Senate version still expands the defense by allowing affiliates of the prior user, in certain circumstances, to assert the defense as it currently exists. [Proposed 35 U.S.C. '273 in S. 1145.]

Other Changes Affecting Prior Art

Disputes Regarding Inventorship

Current 35 U.S.C. '102(g)(1) also governs potential invention date priority disputes in the U.S. Patent Office ' interference proceedings. [Current 35 U.S.C. '135.] Given the move to a first-to-file system, such disputes no longer matter. But, if disputes regarding who invented the subject matter of a patent ' derivation disputes ' do arise, the Act introduces 'Derivation Proceedings' whereby an applicant can challenge another patent or application on the basis that another applicant derived the claimed invention from the applicant requesting the proceeding and, without authorization, filed an application claiming such invention. [Proposed 35 U.S.C. '135.]

Getting Prior Art Before
The Patent Office

The Act also contemplates a series of mechanisms by which prior art may be submitted to the Patent Office ' both during prosecution and after issuance. These mechanisms are directed toward increasing the quality of the patents issued by the U.S. Patent Office.

One mechanism in both bills concerns submissions by the applicant regarding the scope of the prior art at the time of application. [Proposed 35 U.S.C. '123.] Another mechanism, found only in the House bill, expands third-party submissions of prior art to the Patent Office during prosecution. [Proposed 35 U.S.C. '01 in H.R. 1908.]

Still another such mechanism in the House Bill authorizes the U.S. Patent Office to require applicants to submit 'a search report and other information and analysis relevant to patentability.' [Proposed 35 U.S.C. '123 in H.R. 1908.] Similar search reports are already required under an accelerated examination procedure currently in place in the U.S. Patent Office. [MPEP 708.02(a).] An exception is made, exempting small companies and individuals from this requirement. In the Senate version, the search report is mandatory subject to the same micro-entity exemption. [Proposed 35 U.S.C. '123 in S. 1145.]

Third parties are also allowed to submit prior art and a 'concise description of the asserted relevance of each submitted document' for either 6 months after publication of an application or until the date of the first rejection, whichever occurs later. [Proposed 35 U.S.C. '122 (e)(2)(a).] The Notice of Allowance acts as a cut-off for third-party prior art submissions.

The most important new mechanism is a provision regarding post-grant oppositions, which would allow challengers, within a certain window of time, to oppose issued patents in the Patent Office. The specifics regarding the window are hotly contested. After amendments, the respective bills now diverge on this topic. In the House version, a third-party may file a 'Petition for Cancellation ' not later than 12 months after the grant of the patent or issuance of a reissue patent.' [Proposed 35 U.S.C. '321-322 in H.R. 1908.] Note also that the petition cannot be based upon a best mode argument. [Proposed 35 U.S.C. '24 (2) in H.R. 1908.]

The Senate version contemplates an additional second window of filing within 12 months of notice alleging infringement if the third-party can show that the continued existence of the challenged claim is likely to cause 'significant economic harm.' [Proposed 35 U.S.C. ' 321-322 in S. 1145.] Opponents of the bill argue that the standard for filing in the second window is set so low that the window will almost always be open, subjecting patents to a continuous assault in the U.S. Patent Office from would-be infringers.

How Are Prior Art Changes Going to Be Implemented?

The amended House bill 'shall apply to all applications for patent that are filed on or after the effective date.' [Proposed 35 U.S.C. '102 in H.R. 1908 (Section 3 (k)(2)).] Thus, the House bill would apply to any patent application filed, as opposed to patent issued, after a certain date. The proposed language fails to use term 'effective filing date' defined in the Act as including priority claims. [See proposed 35 U.S.C. '100 in H.R. 1908 (Section 3 (h)(2)).] It is thus unclear from the proposed language whether the U.S. Patent Office and the courts will consider claims of priority when determining whether to apply the existing first-to-invent system or the proposed first-to-file system. This could lead to a situation in which a parent application issues as a patent based upon the existing first-to-invent rules, but a continuation application is rejected under the proposed first-to-file rules.

The amended House bill also conditions enactment of the changes to 35 U.S.C. '102 on Europe and Japan's adoption of legislation enacting a congruous one-year grace period to the absolute bar for disclosures originating with the inventor. [Proposed 35 U.S.C. '102 in H.R. 1908 (Section 3 (k)(1)(A)-(2)(A)).] There is no indication, however, that either Europe or Japan has formally contemplated, let alone proposed, such legislation. Thus, under the House bill it is unclear when, if ever, the proposed shift to a first-to-file system would be enacted.

No such condition precedent is included in the Senate bill. The Senate bill states that the provisions would become effective 12 months after enactment of the Act and apply to 'any patent issued on or after the effective date.' [S. 1145 Section 17.] Because issued patents are exempted from the Act, the U.S. Patent Office and the courts would still have to apply the current first-to-invent provisions for years to come in litigation and reexamination. Moreover, unlike the House version, any pending applications in the U.S. Patent Office at the time of the switch to a first-to-file system could face a new body of prior art laws, potentially requiring further examination. The average pendency of patent applications
in 2007 was 32 months. [http://www.uspto.gov/go/com/annual/2007/50304_table4.html] By way of example, if the Senate Bill passed in June of 2008 and became effective for pending applications in June 2009, a patent application filed in January 2007 (having undergone 2.5 years of prosecution under the first-to-invent system) would find itself suddenly subject to a new set of prior art rules.

Should the Act pass, it is unclear if Congress will provide further guidance regarding the logistics of implementing a first-to-file system or leave such implementation details to the U.S. Patent Office.

Conclusion

Both the House and Senate versions of the Patent Reform Act of 2007 contain significant changes guaranteed to impact the U.S. patent system. Hotly contested provisions in both bills remain, but there has been widespread support for the switch to the first-to-file system and the underlying changes to prior art provisions. While it may be unclear if the current incarnation of the Act will pass, it appears that the time is ripe for the United States to shed the last vestiges of the first-to-invent system and embrace otherwise global paradigms for patentability. This shift alone will have a fundamental impact on the practice of patent law.