America Invents Act

CR MILES understands the practical consequences for inventors and company patent practice under the first-to-file provisions of the AIA. We can structure your patent applications before and after implementation of the AIA to take advantage of lower threshold for patentability under the current patent law and provide practical examples related to protecting your inventions prior to obtaining an effective filing date of a United States or International patent application.

America Invents Act. Monumental Changes, Practical Implications On Patent Practice.

The Leahy-Smith America Invents Act of 2011 (AIA) is the first major revision of the patent statute in nearly 60 years. It changes the United States system from a first to invent patent application system to a first inventor to file a patent application system.

America Invents Act

PRACTICAL IMPLICATIONS ON PATENT PRACTICES

1. Introduction

The Leahy-Smith America Invents Act of 2011 (AIA) is the first major revision of the patent statute in nearly 60 years. It changes the United States system from a first-to-invent patent application system to a first-inventor-to-file a patent application system. The monumental changes affected by the AIA have practical consequences on your patent practice.

CR MILES offers strategic guidance and practical examples related to protecting your inventions as the provisions of the AIA are incrementally implemented during the four year period beginning September 16, 2012.

2. Protection For The Inventor Ends--The Race to File First Begins.

Old First-To-Invent System. The first-to-invent system rewarded the first to invent rather than the winner of a race to file a patent application at the United States Patent Office. The inventor could maintain secret or disclose his invention after having invented it and still preserve his United States patent rights by filing a patent application within one year of the public disclosure. Even in view of prior art occurring in the one-year window prior to the filing date of the inventor’s patent application, the inventor stood a good chance of being able to obtain a patent, if the date of invention occurred prior to the date of the prior art reference.

New First-To-File System. The first-to-file system rewards the first to file a patent application for an invention with the United States Patent Office. Whether an invention is patentable depends upon a comparison of the filing date of the patent application with the date of the prior art reference, without an any exclusion of prior art on the basis of an earlier date of invention. Notably, the shift to a first-inventor-to-file system means that inventors can no longer use earlier inventive work to antedate earlier-filed applications or publications by another.

Grace Period Under First-To-File System. Inventors remain protected against their own disclosures that occur less than one year before filing a patent application with the USPTO. Importantly, the only way for an inventor to obtain a grace period against another under the first-to-file system is to disclose the invention publically less than one year before filing and before another discloses the invention publically. However, public disclosure before obtaining a filing date for a patent application renders the subject matter published unpatentable in almost all foreign countries.

Expanded Scope of Prior Art Under First-To-File System. Prior art under the first-to-file system further includes published foreign patent applications having an effective filing date in the United States.

Post Grant Review Under First-To-File System. A patent granted on a first-to-file patent application can be challenged through post-grant review by request on or prior to the date that is nine months after the grant of a patent will enable a petitioner to challenge a granted United States patent directly before the USPTO Patent Trial and Appeal Board. The petitioner may request cancellation of one or more patent claims on any ground that could be raised as an invalidity defense in United States patent litigation.

3. Advantages Of First-To-Invent System Available Until March 16, 2013.

First-To-File System Effective Date March 16, 2013. The new first-to-file law, including the bright line prior art provisions, take effect on March 16, 2013. Importantly, the old first-to-invent law will be applied to patent applications filed in the United States prior to March 16, 2013. Thereafter, the new first-to-file law will apply to any patent applications filed, unless all the claims of a patent application have an effective priority date occurring before March 16, 2013.

First-To-Invent System Applied to Patent Applications In Which All Claims Are Entitled To A Priority Date Occurring Before March 16, 2013. The old first-to-invent law will continue to apply to applications effectively filed before March 16, 2013. If both the priority date and the filing date of a United States patent application (a non-provisional United States patent application or a Patent Cooperation Treaty application designating the United States) occur before March 16, 2013, the existing first-to-invent law will apply.

First-To-File System Applied to Patent Application In Which Even One Claim Has An Effective Filing Date Occurring On Or After March 16, 2013. If no claims in a United States patent application are entitled to a priority date before March 16, 2013, then the effective filing date will be after March 16, 2013 and the new first-to-file law will be applied to the patent application. Importantly, even if one claim in patent application filed on or after March 16, 2013 is not entitled to a priority date before March 16, 2013, even if the claim(s) are later canceled, then the entire application will be subject to the new first-to-file law.

First-To-File System Applied To Claims Having A Breadth Unsupported By Description of Priority Application. If an applicant files a priority application prior to March 16, 2013, broadly claiming an invention insufficiently described by a limited number of embodiments, and then files the identical claims on or after March 16, 2013 describing additional embodiments to support the breadth of claims, then the new first- to-file law applies to the entire application.

4. Strategic Planning For Inventors Prior To March 16, 2013.

United States Provisional Patent Applications.

Avoid Addition Of New Subject Matter To Non-Provisional Patent Applications. Adding new subject matter in a United States non-provisional patent application or Patent Cooperation Treaty Application designating the United States filed after March 16, 2013 and claiming the benefit of a United States provisional patent application, as is common practice, irreversibly places the non-provisional patent application, and any subsequently filed continuing applications, in the new first-to-file system.

Supplement US Provisional Patent Applications And File Non- Provisional Patent Applications Prior to March 16, 2013. The best practice to place a United States non-provisional patent application in the first-to-invent system an avoid the first-to-file system is to supplement United States provisional applications filed after March 16, 2012 with all new subject matter and file the United States non-provisional or Patent Cooperation Treaty patent application designating the United States before March 16, 2013.

File Additional US Provisional Patent Applications Prior to March 16, 2013. If filing the United States non-provisional patent application or the Patent Cooperation Treaty Application designating the United States prior to March 16, 2013, would unacceptably shorten the potential United States patent term, then a second or more United States provisional patent application directed to the additional subject matter should be filed prior to March 16, 2013 to establish a priority date for as much subject matter as possible.

File A US Non-provisional Patent Application Directed To A Narrow Commercial Embodiment In Parallel With PCT Patent Application. In a situation in which there is clear support for a narrow but commercially significant invention in a United States provisional patent application filed on or after March 16, 2012, consider filing a United States non-provisional patent application at the end of the priority year directed only to the subject matter of the priority application and add the additional subject matter to a Patent Cooperation Treaty application filed on or after March 16, 2013 designating foreign countries only.

United States Non-provisional and PCT Patent Applications.

File United States Non-Provisional and PCT Patent Application Designating the United States Prior to March 16, 2013. File United States Non-provisional and PCT patent applications designating the United States before March 16, 2013, then do not add any new claim or amend any original claim to include subject matter not supported by the description of the non-provisional patent application as originally filed. The addition of even one new claim or amending any original claim, even if later canceled, to include subject matter not described in the non-provisional patent application, irreversibly places the non-provisional patent application, and any subsequently filed continuing applications, in the new first-to-file system.

File As Early As Possible To Create Effective Prior Art. Under the first- to-file system, United States patents and published United States patent applications, including PCT applications designating the United States become available as prior art as of their effective filing dates. Under the first-to-file system, another United States applicant will most likely not be able to overcome an earlier-filed, later published United States patent or patent application. Inventors should therefore file United States or PCT applications designating the United States as early as possible to create prior art. Inventors should also file an incremental series of United States applications for defensive purposes as research and development efforts create new inventions.

Assign Patent Applications To One Entity. The new first-to-file system exempts from the prior art disclosures appearing in earlier-filed, later-published United States patents and applications, if the subject matter disclosed and the claimed invention were owned by the same entity (person or company) or subject to an obligation of assignment to the same entity, not later than the effective filing date of the invention claimed. Entities that have employees in multiple countries, employed by different legal entities, or assign patent ownership to different legal entities in different countries, should create an obligation to assign a later-filed priority application, no later than the priority filing date, to the same legal entity that owns an earlier-filed United States patent or patent application.

Assess Existing Patent Practices And Discontinue Practices Unnecessary Under The First-To-File System. Many organizations have established filing strategies or internal practices to address the differences between current United States first-to-invent law and the first-to-file law of most other countries. For example, the practice of filing a United States provisional patent application at the same time as a foreign priority application to create prior art under the first-to-invent system becomes unnecessary because a foreign priority document is prior art as of its filing date under the first-to-file system.

5. Monumental Changes Practical Consequences.

The transition to first-to-invent system represents a monumental change in United States patent law. Given the uncertainty of how the USPTO and courts will interpret and apply the AIA, inventors and applicants need to immediately, and incrementally over the next several years, obtain strategic guidance andadapt patent practices that assure patent protection for inventions under the first-to-file system.

CR MILES offers strategic guidance and patent practices related to protecting your inventions as the provisions of the AIA are incrementally implemented during the four year period beginning September 16, 2012.

For general information, please Contact Us online or call (970) 492-0000.