The USPTO is a First-to-File Patent System
AKA, don't disclose early and be your own disqualifying art.
On September 16, 2011, President Obama signed the America Invents Act into law, designating the USPTO as a First-to-File system away from a First-to-Invent. As a result, the USPTO now uses an Applicant’s “effective filing date” for all prior art rejections, and there will be no more “swearing back” to an earlier invention date to get around these rejections.
What is my “effective filing date”?
● Your effective filing date is the earliest of your US application date or your earliest accepted priority date (e.g., Provisional date, foreign filing date within one year for utilities and six months for designs, etc.)
What is my claimed invention up against once I file?
● When an Examiner is examining your patent application, the Examiner looks for “prior art” that covers the subject matter of your invention. There are two types of “prior art”:
○ Art that shows the claimed invention was patented, described in a printed publication, or public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention (actually printed, patented, in use or on sale before your date).
○ Art that shows the claimed invention was described in an issued US patent or a published US or PCT patent application, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention (filed before your date).
There are exceptions when this “art” may be applied against your claimed invention. Let’s start with the art that’s the most difficult to get past for Applicants and the easiest to find for Examiners: US patents and published US/PCT applications made by another inventor.
Available Exceptions:
A. the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor (they stole it);
B. the subject matter disclosed had, before the subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor (you made a public disclosure before the other patent/application was filed); or
C. the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person (you had a joint research agreement or your patent application and the prior application were both assigned to the same company at the time of filing).
The big exception you might think of is when you made a public disclosure before the other patent/application was filed. Of course, that disclosure would knock out those patents/applications from use as prior art. But did you accidentally create a public disclosure that can be used as art against your patent application? Maybe.
That second type of art we discussed above, i.e., art that shows the claimed invention was patented, described in a printed publication, or public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, also has exceptions to when it can be used to prevent your invention from being patented.
Disclosures made 1 YEAR OR LESS before the effective filing date of the claimed invention may not be used as prior art if:
A. the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
B. the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
So what this means is that an inventor’s prior disclosure of the claimed invention can exclude US patents/applications filed after this disclosure from being eligible prior art. However, this inventor’s prior disclosure can be used as art against his application if the disclosure is made outside of the “one-year grace period.”
So, let’s go BIG PICTURE here.
Don't take your invention and patent it outside the US, describe it in a printed publication, or make it available for public use, sale, or otherwise available to the public without filing your US patent application within one year. Otherwise, your scientific article, EU patent, YouTube video or online sales page will be used as prior art to deny your invention a patent. Now, let's talk international protection. In that case, you may not get the one-year grace period the US allows, and any public disclosures can be used against your application. Generally, don’t talk about your invention to anyone without an NDA or attorney-client privilege.
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