How the Leahy-Smith America Invents Act sought to harmonize United States patent priority with the world, a comparison with the European Patent Convention.

• Published date: 22 December 2013
• Author: Schafer, Mark
• Date: 22 December 2013

INTRODUCTION

Ever since 1790, the United States patent priority system has differed with that of the rest of the world. In every industrialized nation with a patent regime other than the United States, priority is given to the first inventor that files a patent application for a new invention. In the United States, however, a patent has historically been awarded to an inventor that files a patent application after an application has already been filed for the same invention, if he can prove through a variety of steps that he was the first inventor. Since patent priority was granted from the time of invention instead of the time of filing, what constituted prior art for novelty purposes was similarly judged at the time of invention. This temporal difference significantly altered the limitations on patentability in the United States as compared to the rest of the world.

One major international body of patent legislation that follows the typical international first-to-file system is the European Patent Convention ("EPC"). The EPC is a body of patent legislation that governs patent granting procedure in the European Patent Office ("EPO"). The EPO is a centralized European office in which inventors in any one of its designated member countries may file for a patent. The EPO is one of the largest global patent offices and is a prime example of the typical international patent priority system.

On September 16, 2011, United States President Barack Obama signed into effect the Leahy-Smith America Invents Act. Among other things, the Act converted the United States from a first-to-invent priority system to a first-inventor-to-file system. In doing so, Congress claimed its motive was to better harmonize the United States patent priority system with that of the rest of the industrialized world.

This Note examines the Leahy-Smith America Invents Act to determine if Congress in fact achieved its goal of harmonizing the United States patent priority system with the rest of the world, when compared to the European Patent Convention. In doing so, it argues that while the United States did intend to better harmonize the geographic scope of prior art references, it failed to clarify the implications of changing the grace period for inventors to commercially exploit their inventions prior to filing. It also added language regarding prior art references that is wholly absent from the European Patent Convention.

I. HISTORICAL BACKGROUND

The grant of Congressional power to regulate patent rights in the United States is derived from the Constitution, which grants Congress broad power to "promote the Progress of Science and useful Arts.... " (1) Out of this modest clause, the United States patent system was born. The patent system has been described as having two main purposes: (1) to protect the inventor or discoverer of a "new and useful, art, machine, article of manufacture, composition of matter, or any new and useful improvement thereof," (2) by granting him limited monopoly rights and (2) to promote the progress of science by requiring the inventor to disclose his invention to the public in return for these monopoly rights. (3) In 1790, the first Patent Act was passed in the United States, prescribing requirements and limitations on patentable subject matter. (4) For the next 160 years the Patent Act was subject to considerable amendments until its final major change in 1952. (5) Many amendments of the Patent Act dealt with what was considered prior art in terms of novel inventions, (6) what improvements upon prior art were deemed obvious and therefore unpatentable, (7) and other general considerations that might prevent an otherwise valid invention from being granted patent rights. (8)

A. 35 U.S.C. § 102 (9) Before the Leahy-Smith America Invents Act

Prior to the Leahy-Smith America Invents Act ("America Invents Act"), § 102 of title 35 of the U.S. Code primarily covered novelty and statutory bars to invention. (10) Novelty is the requirement that, in order to get patent rights, the inventor must have created something new. Although this definition appears unequivocal, there are many requirements in asserting that an invention is novel. (11) Questions as to these requirements tend to arise in priority disputes between inventors if two inventors create identical or nearly identical inventions at nearly the same time. (12) Most countries, however, do not share priority disputes over inventor rights to the same extent as the United States. This is because novelty in almost every other country is not measured by time of invention, but instead by the inventor's filing date. (13)

In the United States, § 102(g) provides the basis for the first-to-invent novelty requirement. (14) As is obvious on the statute's face, under the § 102(g) novelty standard, a party may block another party's application for patent or obtain a declaration of the patent's invalidity in an infringement suit if it has already been issued, if he can establish that he first invented the art. (15) The basic rules are straightforward:

 To be eligible for the patent, a claimant must have conceived of
                 the invention and reduced it to practice, either by making a
                 working embodiment of the invention or by filing a patent
                 application. The successful claimant is the one who was the first
                 person to conceive of the invention unless that person is not
                 diligent in reducing the invention to practice. If the first
                 conceiver was not diligent in reducing the invention to practice
                 that applicant forfeits the right to the patent, and the process
                 continues until only one applicant remains. The earliest applicant
                 (referred to as the "senior party" to the interference) is presumed
                 to be the first inventor, and subsequent applicants (referred to as
                 "junior parties") must establish their earlier date of invention
                 (16)
                

Questions as to the first inventor typically arise in what are called interference proceedings. (17) An interference proceeding is a hearing in front of a panel of patent attorneys at the Patent and Trademark Office in which the panel decides which inventor gets priority in an invention over another inventor or group of inventors. (18) Although it may seem rather unlikely that two parties would make identical independent inventions at nearly the same time, it actually occurs quite often. (19) When legitimate interference proceedings do occur, they can last many years, be very costly, and expend an incredible amount of judicial resources. (20) The difficulty surrounding interference proceedings is one major reason for the implementation of the America Invents Act.

B. Globalization of Patent Rights

Over the past century, and especially within the last few decades, patent rights have become exponentially more global as world economies have become more integrated. (21) Among several others, three international agreements account for a large portion of this global harmonization: the Paris Convention, the EPC, and the Trade Related Aspects of Intellectual Property ("TRIPS Agreement"). (22)

The 1883 Paris Convention for the Protection of Industrial Property was the first initiative to globalize patent rights. (23) Substantively, it provided that each country recognize the patent rights that a citizen has in his respective country. (24) The major role of the Convention, however, was procedural. (25) The divergent rules for obtaining patent protection in each country under the Convention eventually led to the call for further harmonization as economies became more global. (26)

The EPC was created to reduce the burden on applicants seeking to obtain transnational protection. (27) It first established the EPO, which performs the administrative tasks of searching for prior art, examining applications, and determining the overall patentability of the art claimed by an application. (28) If the EPO determines under its body of law that the applicant should be issued a patent, his patent is then recognized in all EPC countries, and no further filing is required. (29) The EPC ultimately "ensure[d] that the [European] states could guarantee such protection through a single procedure and standard rules that issues and governs patents." (30)

While the Paris Convention and EPC were primarily focused on creating a uniform system for applying for and receiving patents--so-called patent prosecution--the international business community would soon shift its focus to overall harmonization of international patent law. (31) Harmonization involves "creating uniform substantive standards of intellectual property protection." (32) This was achieved in the Uruguay Round negotiation of the TRIPS agreement. (33) The TRIPS agreement substantively changed United States patent law in several ways (34) and, since the passing of the TRIPS agreement, proposed legislation involving international patent harmonization, such as the America Invents Act, has and will continue to grow. (35)

C. Protection Under the European Patent Convention

The system for determining the patentability of an invention in European countries is governed by the European Patent Convention. (36) The organizational structure under the EPC shares some similarities to that of the historical American system, but is markedly different in several ways. The EPC acts as a body of law under the European Patent Office to allow the filing of a patent in a central office for all European member countries. When a European inventor from any member country files in the EPO, that filing date is effective in all EPC countries. (37) This, of course, differs from filing in the United States, in which patent protection is only effective in the United States. (38)

The EPC priority mirrors the typical first-to-file priority system. (39) If two independent inventors create the same invention, priority is awarded to the first inventor to file so long as that application eventually publishes. (40) In this way, an inventor who conceives of a new...