America Invents act
The America Invents Act, which was signed in September of 2011, makes some very significant changes to US patent law. As an inventor, you should become familiar with these changes, as well as the opportunities and challenges these changes present.
Patents will be issued to the first to file rather than the first to invent
Most significantly, the act changes who is entitled to a patent. Under the previous law, if two inventors file patent applications claiming the same invention, the first person to conceive the invention, and to exercise diligence in reducing the invention to practice or filing a patent application, is entitled to the patent. Under the new law, which takes effect on March 16, 2013, the first inventor to file their patent application is entitled to the patent, regardless of who was first to invent.
There is an exception to the first to file rule for publication of an invention by the inventor, followed by filing within 12 months of publication. However, I do not recommend publication of inventions prior to filing a patent application, particularly if foreign patent applications are desired.
The new law provides one additional exception to the first to file rule. It will still be possible to obtain a patent over an earlier filer by proving 1) an earlier date of invention, and 2) communication of sufficient details to enable reduction of the invention to practice to the applicant who was first to file. However, a much safer practice is to file patent applications prior to disclosing inventions to third parties, avoiding this situation entirely.
Where possible, I recommend filing patent applications in advance of the new law’s effective date to take advantage of the well-developed precedent under the old law and avoid the uncertainties that accompany any new change in the law.
Once the new law takes effect, I encourage filing an initial provisional patent application as soon as possible, followed by subsequent provisional applications as the invention is further developed and/or as the final utility patent application is drafted. This procedure will ensure that each aspect of your invention is given the earliest obtainable filing date, and is also being recommended by many other patent attorneys.
Opportunities to challenge competitor’s patent applications and patents
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Third Party Submissions
Under current law, all US patent applications with published foreign counterparts are subject to publication 18 months after their issue date. Beginning on September 16, 2012, it will become possible for me to submit references, as well as an explanation of how the references affect patentability of the claims, to the US Patent and Trademark Office for consideration during examination of a patent application. If you have information that may affect the patentability of a competitor’s claimed invention, I can submit this information on your behalf, without revealing your identity, in hope of preventing issuance of a patent that may affect your business.
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Post Grant Review
Beginning on September 16, 2012, Post Grant Review and Inter Parties Review procedures will be available in addition to the current Inter Parties Reexamination procedure to challenge patents utilizing an administrative proceeding before the US Patent and Trademark Office. These procedures offer a lower burden of proof and lower cost than litigation. Reviewing and challenging patents owned by competitors should become part of your competitive strategy.
Prioritized examination of patent applications
Under the standard examination protocol, obtaining a patent typically takes 3-4 years. The goal of the prioritized examination program is to produce final disposition of patent applications within 12 months of filing. If an issued patent is urgently needed, if the number of claims can be limited to meet the program requirements, and if you are willing to work with me to respond to office actions quickly, then this program may be worth considering.
Changes to the standards for patentability
Under the new law, the definition of prior art is broadened, with limited exceptions for disclosure by the inventor within one year of filing the patent application. Additionally, the standard for obviousness has been broadened to a small extent.
Disclaimer
This page is a brief summary of a very long act, and therefore does not address many aspects of this act. My intent is to provide general information, and not specific legal advice, through this page. Please do not hesitate to contact me with your questions or to discuss your specific situation.