Showing “First to Invent”.
While all of us that practice patent law realize that the U.S. is a first-to-invent country, rather than a first-to-file country, an interesting aspect of the law can arise when considering the question of whether a client was first-to-invent. In particular, what if a client invents something in a foreign country? How do these circumstances affect “first to invent” status? Does the inventing have to occur on U.S. soil? Similarly, what if a foreign applicant invents in a non-U.S. country? How does this affect their “first to invent” status?
Prior to the enactment of NAFTA and the Uruguay Round Agreements Act, applicants were permitted to show they were the first to invent only by offering evidence of activities conducted in the U.S. or by filing a foreign priority application. Such evidence of first to invent includes evidence of conception, diligence, and reduction to practice.
With the enactment of NAFTA and, later, the Uruguay Round Agreements Act, the law under 35 USC 104 changed. It is easiest to describe Section 104 in terms of authorized countries (U.S., NAFTA, and WTO countries) and unauthorized countries (everywhere else).
Pursuant to Section 104, any inventing performed, and evidence thereof, in an authorized country by a U.S. applicant (note: citizenship is not required) may be used to show that the applicant was first to invent.
Invention that has occurred in unauthorized countries is entitled only to the earliest date on which the invention was disclosed to another in an authorized country. Providing an invention disclosure with an enabling disclosure or a marked up draft of an application to someone in an authorized country is sufficient to meet this standard. Diligent reduction to practice or mere knowledge of the invention in an unauthorized country will not be considered for determining priority of invention. Thus, activities in unauthorized countries cannot be used to show conception or diligence when attempting to antedate a prior art reference under 37 CFR 1.131.
It is worth noting that Section 104(a)(3) addresses potential issues arising from differences in discovery practices between the U.S. and foreign countries. U.S. discovery rules and laws are quite extensive compared to many foreign countries. If, either by choice or by accident, an applicant does not supply information equivalent to what would be forthcoming under U.S. discovery, then the applicant may face the potential that the courts of the U.S. and the USPTO may give very little weight to the applicant’s evidence of invention abroad.