This post is written by a guest author, US Patent Attorney Geza Ziegler of Ziegler IP Law Group, LLC.
On 16 September 2011, a new set of laws regulating the patent system in the United States became effective. These new laws are fondly referred to as the “America Invents Act” and are the result of a long effort to improve the US patent system.
The America Invents Act, also referred to as the AIA, will, over time, bring into effect certain changes to various aspects of US patent law. The first of these changes went into effect on 26 September 2011 and the latest of the changes will go into effect on 16 March 2013.
What are the changes? Some of the highpoints of the AIA include:
- Fee increases;
- Prioritized Examination;
- Enhanced Third Party involvement during patent examination;
- Filing in the name of the Applicant (not inventor); and
- First to File.
A timeline for the enactment of various provisions of the AIA, prepared by the USPTO, is set out below:
First to file? Perhaps the most talked about aspect of the AIA has been the change from a “first to invent” system to a “first to file” system. This particular aspect of the AIA will go into effect on 16 March 2013 (note that there is a mistake in the USPTO prepared timeline above.) However, although this provision is referred to as “first to file” it might be more appropriately called first to publish and file within one (1) year.”
Although the AIA states that the “first to file” inventor may be entitled to the rights to a patent, there are some exceptions.
First, there is a one (1) year grace period from a first public disclosure within which to file a patent application. This “grace period” is similar to the grace period provisions of the current US patent law. This allows an inventor who “discloses” and then “files” within one (1) year to be entitled to the patent rights, even if someone else files beforehand.
Second, if it can be demonstrated that a first-in-time filer “derived” their invention from a second-in-time filer, the second-in-time filer may be entitled to the patent rights.
Thus, while in some cases, the “first to file” might be entitled to the patent rights, there are ways for a second-in-time filer to be entitled to the rights. A new “derivation” proceeding will be implemented under the AIA, and will provide a forum for these issues to be disputed and resolved.
What does this mean in practice? Should an inventor immediately “publish” their invention in order to prevent others from being entitled to the patent rights? That may not be a practical solution, depending on your country of origin. For example, if your country’s patent laws do not provide a “grace period” such as that found in the US, publication prior to filing could preempt your ability to receive a patent. Should you rush to have your patent application prepared in an effort to hopefully be the first to file? While that might work in some cases, applications should be prepared with a certain level of care that leads to a high quality patent application. Should one file a provisional application (in the US) with a corresponding public disclosure? An option, but is there a cost? Thus, while there may be many ways to protect your patent rights, one should carefully consider the options with their advisor prior to any early publication.
The AIA proposes to provide harmonization of the US patent laws with non-US countries, as well as improve patent quality. As the provisions come into effect over the next 18-months, we will need to consider the practical effects of our filing strategies and consider the options for challenging patents both during the application examination stage as well as post grant. Further aspects of the AIA will be considered in later postings.
