Patent Reform Act of 2010: Proposed First-to-File Statute
35 USC 100 Definitions
(g)Theterms ‘joint inventor’ and ‘coinventor’ mean any1 of the individuals who invented or discovered the subject matter of a joint invention.
(h)Theterm ‘joint research agreement’ means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(i)(1) The term ‘effective filing date’ of a claimed inventionin a patent or application for patent means—
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).
(2)Theeffective filing date for a claimed invention in an applicationfor reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
(j)Theterm ‘claimed invention’ means the subject matter defined by a claim in a patent or an application for a patent.
35 USC 102 Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitledto a patent unless—
(1) the claimed invention was patented, describedin a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patentissued under section 151, or in an application for patent published or deemed published under section122(b), 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.
(1)DISCLOSURESMADE 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 inventionshall not be prior art to the claimed inventionunder subsection (a)(1) if—
(A) the disclosure was made by the inventoror joint inventor or by another who obtained the subject matter disclosed directly or indirectlyfrom the inventor or a joint inventor; or
(B) the subject matter disclosedhad,beforesuch 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.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—Adisclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtaineddirectly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosedhad,beforesuch subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directlyor indirectly from the inventor or a joint inventor; 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.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed inventionshall be deemed to have been owned by the same person or subject to an obligation of assignment to the samepersonin applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint
research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—Forpurposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filingdateunder section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such applicationthat describes the subject matter.
35 USC 103.Conditions for patentability;nonobvioussubjectmatter
Apatent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differencesbetween the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed inventionto a person having ordinary skill in the art to which the claimed invention pertains.Patentability shall not be negated by the manner in which the invention was made.
35 USC 291. Derived patents
(a) IN GENERAL.—Theowner of a patent may have reliefby civil action against the owner of another patent that claims the same invention and has an earlier effective filing date if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section
(b) FILING LIMITATION.—Anaction under this sectionmay only be filed within 1 year after the first publicationof a claim to an invention that is the same or substantiallythe same as the earlier applicant’s claimed invention.
35 USC 135.Derivation proceedings
(a) INSTITUTION OF PROCEEDING.—Anapplicant for patent may file a petition to institute a derivation proceeding. The petition shall set forth with particularity the basis for finding that an earlier applicant derived the claimed invention from the petitioner and, without authorization, filed an application claiming such invention. Any such petition may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier applicant’s claimed invention, shall be made under oath, and shall be supportedby substantial evidence. Whenever the Director determinesthat a petition filed under this subsection demonstratesthat the standards for instituting a derivation proceeding are met, the Director may institute a derivationproceeding. The determination by the Director whetherto institute a derivation proceeding shall be final and nonappealable.
(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.—Ina derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether the earlier applicant derived the claimed invention from the petitioner and, without authorization, filed an application claiming such invention. The Director shall prescribe regulations setting forth standardsfor the conduct of derivation proceedings.
(c) DEFERRAL OF DECISION.—ThePatent Trial and Appeal Board may defer action on a petition for a derivationproceeding until 3 months after the date on which the Director issues to the earlier applicant a patent that includes the claimed invention that is the subject of the petition.The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
(d) EFFECT OF FINAL DECISION.—Thefinal decisionof the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims.The final decisionof the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had,constitute cancellationof those claims, and notice of such cancellationshall be endorsed on copies of the patent distributed after such cancellation
(e) SETTLEMENT.—Parties to a proceeding institutedunder subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed inventionin dispute. Unless the Patent Trial and Appeal Board findsthe agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or understandingshall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any personon a showing of good cause.
(f) ARBITRATION.—Parties to a proceeding institutedunder subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration.Such arbitrationshall be governed by the provisions of title 9, to the extentsuch title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director,and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall precludethe Director from determining the patentability of the claimed inventions involved in the proceeding.