Takenaka, Toshiko --- "The Novelty and Priority Provision under the United States First-to-File Principle: A Comparative Law Perspective" [2009] ELECD 248; in Takenka, Toshiko (ed), "Patent Law and Theory" (Edward Elgar Publishing, 2009)

Book Title: Patent Law and Theory

Editor(s): Takenka, Toshiko

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845424138

Section: Chapter 13

Section Title: The Novelty and Priority Provision under the United States First-to-File Principle: A Comparative Law Perspective

Author(s): Takenaka, Toshiko

Number of pages: 31

Extract:

13 The novelty and priority provision under the
United States first-to-file principle:
a comparative law perspective
Toshiko Takenaka*



1 Introduction
Patent professionals trained in first-to-file countries wonder why the novelty
and priority provisions set forth in 35 USC § 102 are so complex and difficult
to understand because the novelty and priority provisions of first-to-file coun-
tries are short and simple. Only after studying the historical backgrounds of
each provision and the policy considerations related to the terms used in those
provisions, can they hope to understand the complex structure of defining
prior art and the unique interpretation given to the terms. However, the more
familiar they become with US case law and the policies emphasized by US
judges, the more they question whether the United States actually follows the
first-to-invent system, which US patent scholars and professionals claim to
follow.1 The policies US judges emphasize are similar to the policies empha-
sized by first-to-file patent systems. Furthermore, the examination practices
followed by the United States Patent and Trademark Office (USPTO) are very
similar to that of patent offices in first-to-file countries.
On its face, the § 102 novelty and priority provisions under the US first-to-
invent policy are very different from novelty and priority provisions under the
first-to-file principle. The first provision defining novelty in § 102(a) sets forth
a determination of novelty as of the invention date, and § 102(g) provides a
rule that ...