The U.S. Patent System has traditionally followed a “first to invent” approach to establishing priority. In pertinent part, 35 U.S.C section 102 provides:
A person shall be entitled to a patent unless – (a) the 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, or (b) 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, more than one year prior to the date of the application for patent in the United States…
In this regard, section 102(b) currently allows an inventor a “grace period” of one year from a written disclosure or public use of the invention to the date the application is filed. Beyond one year, the disclosure or use becomes a barring event. However, if the application is filed during that one year period, during prosecution an inventor can “swear behind” the filing date to show an earlier date of invention for the purpose of establishing priority over prior art with an interim date (between the invention and filing dates). In this way, even though a patent application’s priority date on its face is its filing date, we have a “first to invent” system because of this mechanism for establishing earlier priority.
The proposed Patent Reform Act subtly, yet significantly, changes this. The potential new language in section 102 establishes a “first to file” system of priority, and narrows the availability of the one year grace period:
(a) NOVELTY; PRIOR ART. -- A person shall be entitled to a patent unless-- (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention...
(b) EXCEPTIONS. -- (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.-- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection(a)(1) 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....
The looming change is of course that the determinative event is the filing or the application, not the date of invention. There would no more “swearing behind” a publication or reference to show an earlier invention date. However, it is interesting to note that under Exception (B) a prior art disclosure within one year from the filing date can be negated by the inventor’s prior public disclosure (so long as it is still within the one year period).
In short, to protect an inventor’s interest, not only should a patent application be filed as soon as possible, it behooves the inventor to make a public disclosure of the invention as soon as possible as well.