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An Introduction to Patenting in the United States, Part II
By: Stephen S. Mosher © 2014  Editor’s note: This is the second of a pair of articles giving an overview of the American patent system. Part I appeared in our March 2014 issue.

THE AMERICA INVENTS ACT  (“AIA”)
(H.R. 1249, enacted September 16, 2011)
This Act, long anticipated, makes significant and comprehensive changes to the patent law of the United States. It became fully effective March 16, 2013. This article will highlight some of the changes of most importance to inventors and their patent-attorney representatives. Specific questions should be referred to a patent attorney for consultation in light of the particular facts of a matter or question.

THE FIRST-TO-FILE SYSTEM
A major provision of the AIA is to change the United States’ patent system from a “First-to-Invent” system to a “First-to-File” system. This change is made so that the patent system of the U.S. is harmonized with the rest of the developed world, which uses the first-to-file system.

The first-to-file system presumes that the first inventor or applicant who files an application for an invention has the prior claim to that invention. Under the old first-to-invent system, the presumption favored the person who could demonstrate he was the first person to invent the thing sought to be patented. First-to-file and first-to-invent are substantially different concepts, which greatly affects the kind of prior art that applies during the examination of the application for a patent.

Please note this Disclaimer: The following paragraphs are summaries key parts of the new system, and not to be construed as legal advice or actual statements of the law. This discussion should be taken as an introduction to the statute.

PRIOR ART UNDER THE NEW SYSTEM

Under the new first-to-file system, which became effective March 16, 2013, effective prior art includes most kinds of prior art available to the public anywhere in the world, in any form, before the filing date of the applicant’s patent application.

One important conclusion to be drawn from this change to the first-to-file system is that inventors are strongly advised to avoid disclosing their invention to others before their application is filed. Also, inventors should file a provisional patent application as soon as the concept is clearly defined and at least one embodiment of the concept is visualized so that it can be reduced to a sketch. A provisional patent application is quick and inexpensive to file, and it establishes an original filing date for the invention. The applicant then has one year to replace the provisional application with a complete “non-provisional” patent application.

SOME COMMENTS REGARDING SUBJECT MATTER

Several new provisions in the AIA affect the subjects for which a patent may be obtained. In one provision, inventions for “any strategy for reducing, avoiding, or deferring tax liability” is “insufficient to differentiate a claimed invention from the prior art,” and is therefore prohibited. AIA, § 14(a). In general, however, a method that applies an abstract idea or algorithm in a specific application may be eligible for patenting.

To clarify these terms (briefly, based on current case law): Consider whether a business method is merely a sequence of steps of a mental process—such as a list of instructions or an algorithm for performing a service. Such a method is ephemeral—it is an abstraction that only represents the service. In contrast, if a method or process is performed by a particular machine or apparatus, such as a computer programmed to carry out the method, or the method or process transforms a particular article or thing to provide a tangible result, the method or process may be patent-eligible. Even data, if it is changed in form to have a particular function or a different use, may be the thing transformed.

CONCLUSION

The first-to-file system adopted by the America Invents Act effects substantial changes to the U.S. patent system, including (A) the determination of who has priority to an invention; (B) the effective date and the identity and location of prior art that pertains to an invention; (C) the strategies of an inventor considering whether to apply for a patent; and (D) several approaches to determining what subject matter may be patented.

Stephen Mosher is a registered patent attorney and a partner at Whitaker, Chalk, Swindle & Schwartz, PLLC, of Fort Worth. His J.D. degree was granted by Texas Wesleyan University in 1995 and his undergraduate degree in electrical Engineering is from Iowa State University. Before earning his law degree, he was employed for many years as an engineering manager with Tandy Corporation in Fort Worth. He is currently a member of the Dean’s Advisory Council of the Texas A&M University School of Law and in 2010 was honored as a Distinguished Alumnus by the Texas Wesleyan University School of Law.