“First to File” – Translation: File Early. File often.

When the Leahy-Smith America Invents Act (AIA) was signed into law in late 2011, the “buzz word” circulating the patent community was “first to file”. While the AIA has been in effect for more than 10 years, the urgency implied by “first to file” is still sometimes underappreciated by the uninitiated.  A recent Court of Appeals for the Federal Circuit (CAFC)[1], Sanho v. Kaijet[2], highlights how changes brought by the AIA impact real world inventions, and highlights the urgency behind the “first to file” standard.

“First to file” essentially means that the first person(s) to file a patent application are presumed to the be the rightful inventors.  Like its predecessor, the AIA includes “safe harbor” provisions that give inventors a“grace period” to pursue a patent application for their invention – at least in the US[3].  However, the Sanho case highlights why it is not always advisable to rely on that safe harbor/grace period, especially where multiple competitors are expected to be innovating around the same time.  

Sanho involved a USB hub-like device that allows a variety of peripheral devices (e.g., keyboards, mice, speakers, chargers, portable hard drives) to be connected to a computer through a single port.  These “hubs” became popular when Apple®’s Macbook® laptop computers moved to essentially providing only USB-C type connection ports.  Users began looking for solutions to connect their existing peripheral equipment with various types of non-USB-C type connections to their new Macbook® computers.  Along came inventions like described in US Pat. No. 10,572,429 to Liao (“Liao”) at issue in Sanho, which facilitated these connections though a central “hub” device.  

During litigation, another application (“Kuo”) was cited as invalidating art against Liao.  Kuo was filed before Liao, but did not publish until later.  This highlights a first point of caution to the uninitiated – even the “best” prior art search cannot reveal everything that might someday be cited against a patent or patent application.  This is, at least in part, because patent application publish at different times, and some never publish or only publish if/when they become a patent.  While those situations are relatively rare, it is a notable consideration for fields, like that of Laio and Kuo, where one can reasonably expect that a large number of competitors are quickly innovating to solve a same or similar problem and thus a large number of filings may be made around the same time.  

On the flip side, the situation in Sanho highlights the need to strategically consider filing options that limit public accessibility to a pending application, as it may be in one’s favor to keep one’s application(s) from publishing until as late as possible.  

In Sanho, Laio attempted to rely on one of the AIA’s safe harbor/grace period exceptions that help an inventor overcome their own prior art. The particular exception considered by the CAFC in Sanho involves situations where an inventor has “publicly disclosed” their invention before filing,and can then, within limits, use that earlier disclosure to predate otherwise intervening prior art.  In Sanho, Laio pointed to certain “secret” discussions and orders for its invention.  Essentially, the CAFC held that this was a sufficiently public disclosure to trigger the safe harbor/grace period exception.  The policy consideration here likely being that the type of disclosure should be sufficient to allow the public to make/use the invention.  Notably, however, such activity would likely be sufficient to serve as prior art to Laio’s own filing if Laio had waited longer to file its own application.  

Thus, Sanho serves as yet another reminder that relying on safe harbors/grace periods is a tricky business that can raise risks, some of which might not be fully appreciated until years later.  As such, and especially under AIA’s “first to file” system, it remains a best practice to file early and file often.  

If you have questions about “first to file” for U.S. patent applications, seek the advice of a patent attorney.

[1] The exclusive appeals court for patent cases.

‍[2] Sanho Corp. v. Kaijet Tech. Int'l, No. 1:18-cv-05385-SDG (N.D. Ga. Feb. 1, 2022)

[3] Many other countries around the world are not so gracious.  

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