The America Invents Act - Big Changes for Inventors

BEVERLY A. BERNEMAN

Partner

“The U.S. will become a ‘first to file’ jurisdiction. The change will apply to patent applications filed on or after March 16, 2013. This change brings the U.S. in line with the patent laws of most of the developed nations in the world.”


The America Invents Act - Big Changes for Inventors

The Leahy-Smith America Invents Act (AIA), which goes into effect on September 16, 2012, changes many of the ways in which an inventor can obtain a patent in the United States. The best way to learn about the impact of the AIA is to compare key provisions of patent law before and after the AIA.

Priority Rules:

Before: The U.S. was a “first to invent” jurisdiction. In other words, it did not matter when you filed your patent application as long as you were the first to invent it. This created a lot of litigation. Inventors had to keep copious lab notes just in case they had to prove the time-line of their inventions. Even then, the outcome was far from assured.

After: The U.S. will become a “first to file” jurisdiction. The change will apply to patent applications filed on or after March 16, 2013. This change brings the U.S. in line with the patent laws of most of the developed nations in the world.

Disputes Regarding Priority:

Before: Disputes between two inventors over which one was the first inventor were determined by an interference proceeding in the U.S. Patent and Trademark Office (USPTO).

After: Interference proceedings have been eliminated and replaced with a “derivation proceeding.” The derivation proceeding will allow a later applicant to challenge the priority of the invention. It must be instituted within one year of the first publication of the claimed invention and can have any of the following results: (1) A refusal to the issuance of claims in a pending patent application; (2) Cancellation of claims if a patent has issued; and (3) Correction of the inventorship in an application.

Prior Art:

Before: Prior art was limited to prior art in the United States.

After: Prior art will include information available or an activity occurring before the effective filing date of the patent application, anywhere in the world. This does not apply to publications by the inventor within one year of the application. The law also notably expands prior art to include foreign offers for sale and public uses.

Conclusion:

There are many more changes that include increased filing fees, patent prosecution and resolution of disputes. Having a patent can greatly increase the value of a business, so inventors should pay careful attention to the changes in the law. If you have been working on an invention, contact Beverly Berneman to help you determine if you have an invention that is worth protecting and consult with you on how to proceed.