Abstract

http://ssrn.com/abstract=1969592
 
 

Footnotes (254)



 


 



Priority Among Competing Patent Applicants Under the American Invents Act


Donald S. Chisum


affiliation not provided to SSRN

December 5, 2011


Abstract:     
This Paper evaluates a historic shift in the United States patent system on how priority is awarded when two or more independent inventors each seek a patent on the same invention. The America Invents Act (AIA) alters the "first to invent" priority principle, which has been a feature of the United States patent system since the earliest statutes in 1790 and 1793. The AIA adopts instead a "first inventor to file" priority principle. The AIA retains a "grace period" of one year for inventor pre-filing date disclosures. It provides remedies for instances in which a first-to-file applicant derived an invention from a second-to-file applicant.

Using a hypothetical example, the Paper describes the AIA's priority provisions in detail. It identifies features of the AIA that are ambiguous. For example, the effective date of the shift is unclear and may be subject to manipulation. The status of a doctrine limiting the prior art effect of previously-filed patent applications (Wertheim) is left uncertain. A fundamental question about a new "derivation proceeding" begs for an answer: is it limited to instances where a second applicant asserting derivation by a first applicant claims substantially the same invention as the first applicant?

The Paper also identifies aspects of the AIA that are clear but perplexing in terms of policy. For example, why was the right to bring a "derived patent suits" limited to a junior-filing patent owner suing within one year of issuance of a senior-filing patent owner's patent?

Number of Pages in PDF File: 87

Keywords: patent law reform, America Invents Act, priority, first to invent, first to file, derivation, AIA, effective date

working papers series





Download This Paper

Date posted: December 8, 2011  

Suggested Citation

Chisum, Donald S., Priority Among Competing Patent Applicants Under the American Invents Act (December 5, 2011). Available at SSRN: http://ssrn.com/abstract=1969592 or http://dx.doi.org/10.2139/ssrn.1969592

Contact Information

Donald Chisum (Contact Author)
affiliation not provided to SSRN ( email )
Feedback to SSRN


Paper statistics
Abstract Views: 5,402
Downloads: 2,447
Download Rank: 2,588
Footnotes:  254
Paper comments
No comments have been made on this paper

© 2014 Social Science Electronic Publishing, Inc. All Rights Reserved.  FAQ   Terms of Use   Privacy Policy   Copyright   Contact Us
This page was processed by apollo2 in 0.282 seconds