First inventor to file (FITF)
The international IP community was very excited following commencement of the America Invents Act (AIA), when the United States finally moved from its first to invent patent system to the present first inventor to file (FITF) system.
However, a number of elements of the FITF system were carried over from the first to invent system that are not part of conventional first to file patent systems, including the grace period and the treatment of earlier filed but later published applications, otherwise termed “secret prior art”. Another feature of the FITF system that did not attract much attention when the AIA commenced is that the “effective filing date”, or priority date, applies to the whole claim. In a system based on filing dates rather than dates of invention, the effective filing date is of particular importance, and only allowing a claim to have a single effective filing date can have adverse consequences.
Prior to the 2016 decision of the Enlarged Board of Appeal of the European Patent Office in case G1/15, claims in European patents or patent applications that relied on multiple or partial priorities were vulnerable to anticipation by their European priority applications or by their divisional or parent European applications, so called poisonous priority and poisonous divisionals. That was because the provision intended to allow a single claim to have multiple priority dates had been interpreted in a restrictive manner, so that it only applied to claims defining a limited number of clearly defined alternative subject-matters.
Poisonous priority - a FICPI study
FICPI recently carried out and reported on a study that sought to ascertain whether there are other countries that do not fully recognise multiple and partial priorities within a single claim and, if so, whether that can give rise to poisonous priority or poisonous divisionals.
Of the 35 countries surveyed in the study, most fully recognised multiple and partial priorities within a single claim. The six countries identified as not providing full recognition of multiple and partial priorities in a single claim are Australia, New Zealand, Canada, China, India and the United States. Of those countries, the possibility of poisonous priority and poisonous divisionals was evident in Australia, New Zealand and China. Poisonous priority and poisonous divisionals are not possible in the United States or Canada as a result of the protection against self-collision, or in India as a result of the circumstances under which a divisional application can be filed.
However, although poisonous priority and poisonous divisionals cannot occur in the United States, other problems may still arise, which can be illustrated by examining one of the scenarios explored in FICPI’s study.
Scenario 1 discussed in FICPI’s study exemplifies partial priority where a new alternative is added to the PCT or foreign application relative to the disclosure of the application from which it claims priority.
Scenario 1 can be summarised as follows:
- A priority setting application (P1) is filed disclosing widget X with component Y composed of copper; and
- Application A (which could be a PCT application) is filed claiming priority from P1 and having a claim to widget X with component Y composed of copper OR aluminium (Claim A).
The questionnaire then asked whether either or both of the following activities carried out independently by a third party after the filing date of P1, but before the filing date of Application A, would invalidate Claim A.
>> Activity 1: Filing a patent application (Application B) in (or with effect in) the country concerned disclosing and claiming widget X with component Y composed of copper, and where Application B is published after the filing date of Application A.
>> Activity 2: Publishing a document (Document D) disclosing widget X with component Y composed of copper.
Scenario 1 can be illustrated as follows:
In view of Articles 4B and 4F of the Paris Convention, one would not expect either of the third party activities described in Scenario 1 to invalidate Claim A in the United States. However, since P1 does not disclose the aluminium alternative, Claim A would not be entitled to the effective filing date of P1; the effective filing date (or priority date) of Claim A would be the filing date of Application A. As that is after the filing date of third party Application B, and after publication of third party Document D, both third party activities would destroy the novelty of Claim A in the United States.
That result can be contrasted with the situation in all other countries surveyed by FICPI, except for New Zealand and India, where Claim A would be entitled to the priority date of P1 insofar as it encompasses widget X with component Y composed of copper. Thus, in all of those countries Claim A would not be invalidated by either third party activity.
Publish or file?
The question then arises as to whether the inventor filing Application A would have been better off publishing their invention instead of filing P1, relying instead on the grace period instead of an effective filing date of P1. In that scenario, P1 in the timeline shown above would represent the publication by the inventor of widget X with component Y composed of copper. If the inventor then filed a provisional or non-provisional application claiming widget X with component Y composed of copper or aluminium, would either of the third party activities invalidate Claim A?
In that case, neither Application B nor Disclosure D would not be citable against Claim A due to the grace period provided under § 102(b)(2)(B), in view of the earlier disclosure by the inventor. Accordingly, if the inventor had published their invention rather than file provisional application P1, Claim A would not be invalidated by either of the third party activities.
Of course, there is a very simple solution to the problems arising in the United States as a result of only allowing a claim to have a single effective filing date. That solution is to split Claim A into two separate claims, one directed to widget X with component Y composed of copper and the other directed to widget X with component Y composed of aluminium. The claim directed to widget X with component Y composed of copper would be entitled to the effective filing date of P1, and neither third party activity would be citable against that claim. The other claim directed to widget X with component Y composed of aluminium, while novel over Application B and Disclosure D, would also need to possess an inventive step over the disclosures of those documents in order to satisfy § 103.
However, a patent applicant is often unaware at the time of preparing their PCT or US non-provisional application that they may need to rely on multiple or partial priorities to overcome prior art, and that their claims should be split to ensure they are entitled to the earliest possible effective filing dates. If the prior art is cited during examination the applicant would have an opportunity to split the claims prior to grant of the patent. But what happens if the prior art is first cited during litigation and the claims have not been split? Would a US court (or the USPTO during a post-grant review or inter partes review) allow a patentee to split claims in order to benefit from an earlier effective filing date? That is not a question I can answer, but would be very interested to know whether it is possible.
During its recent meeting with the USPTO, FICPI provided the USPTO with a copy of its report and highlighted the problems that can result when a claim is only entitled to a single effective filing date. However, it remains to be seen whether the USPTO will recognise that as a problem to be addressed.
Consider joining FICPI’s Study & Work Committee focused on International Patent Matters (CET 3)
Get in touch with the author of this blog, Michael Caine, to further discussions.
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