The Essence and Precautions of the First-Filing System in U.S. Patent Law

1. the essence of the first application system in the United States patent law.

The American Inventions Act (AIA) came into force. This is the latest major change since the U.S. Patent Law was first enacted in 1790. The intensity, scope, and significance of its reform are generally regarded by the industry as an institutional revolution second only to the Patent Law of 1952. Thanks to the AIA, Congress completed a 30-year revolution in patent law that completely changed every fundamental aspect of U.S. patent law. In fact, through AIA, the U.S. patent law adopts the "inventor first application system", and does not fully adopt the "first application system" (first-to-filerule) commonly used in other countries and regions in the world. Although it is understood that the AIA's amendment to Section 102 of the Patent Law is revolutionary, it does not completely abandon the basic rules of the current patent law, especially in terms of basic concepts and principles.

"Article 102 Patentability conditions: novelty, loss of patent The person shall be entitled to a patent unless--

(a) before the invention was made by the patent applicant, the invention was already known or used in this country by others, or was patented or described in a printed publication at home or abroad,

(B) more than one year before the date of application in this country, the invention has been patented or described in a printed publication at home or abroad, or has been publicly used or sold in this country,

(c) the person has abandoned the invention,

(d) the invention was first patented, resulted in a patent, or was the subject of a certificate of invention in a foreign country by the applicant, legal representative, or assignee of the invention before the date of the application in this country, and the application for a patent or certificate of invention was made twelve months before the application in the United States,

(e) the invention is described in

(1) A patent application filed by another person in the United States and published under Article 122 before the patent applicant completes the invention, or

(2) In a patent which was filed and granted in the United States before the applicant for the patent accomplished the invention, unless an international application under a treaty as defined in section 351 has the same effect as if filed in the United States, and only if the international application designates the United States and is disclosed in English under section 21 of that treaty, is not himself the person who made the invention the subject of the patent, in the course of a conflict review under section 135 or section 291, the other inventor involved proves, to the extent permitted by section 104, that before the person's invention, the invention has been made by another person and has not been abandoned, suppressed or concealed, or before the person's invention, the invention has been made by other inventors in this country and it has not been abandoned, contained or hidden. In determining priority under this subparagraph, consideration shall be given not only to the date on which the inventive concept was first conceived and put into practice, but also to the reasonable diligence of the person who first completed the inventive concept and then put it into practice from the time when he completed the inventive concept before others."

Notes on 2. the first application system of the patent law of the United States.

The United States patent was officially changed to the first application system on March 16, 2013. The amendment of the US patent law involves a wide range of contents. For Chinese enterprises, there are three major changes that need special attention.

First of all, in the patent application from the first invention system to the inventor first application system (firstinventortofile). For a long time, the U.S. patent system has been using the first-to-invent system, that is, patents are granted to the inventor who first made the invention. At present, most countries in the world adopt the first application system.

Secondly, the scope of the existing technology is expanded and absolute novelty is implemented. Prior to the United States patent law, worldwide in the form of patents, public publications, as well as in the United States for public use, sale and public technology constitutes prior art. After the amendment, the geographical distinction is eliminated, and all technologies known worldwide by patent, public publication, public use, sale or other means constitute prior art.

There have also been significant changes in the mechanisms for challenging patents: new procedures have been added. Previously, challenges to the validity of patents in the United States were mainly resolved in court through litigation. The validity of the patent was challenged through administrative channels, which had previously been mainly unilateral retrial procedures and bilateral retrial (inter-partereexam) procedures in the United States. In this revision of the Patent Law, the United States canceled the retrial procedure of both parties and added the retrial procedure after authorization (post-grantreview) and the retrial procedure of both parties (interpartereview). The time and reasons for the initiation of these two procedures are different, but both are tried by the Patent Trial and Appeal Board of the United States Patent and Trademark Office. If you are not satisfied with the trial decision made by the Patent Trial and Appeal Board, you can appeal to the United States Court of Appeals for the Federal Circuit.