Archive Posts

January 27, 2012

Comments on American Invents Act (AIA)

A landmark patent law, the America Invents Act (AIA), went into effect on September 16, 2011, fundamentally changing United States patent practice. According to the new law, on March 16, 2013, the United States will change to a "first to file" system to comport with most other countries in the world. Until then the United States will continue to award patents to the "first to invent," which can be demonstrated not only by the filing date of a patent application, but also by evidence of work performed by the inventor before the application was filed. As of March 16, 2013, such evidence will not suffice to obtain a patent. This means that as soon as a patentable invention is recognized, at least a provisional application should be filed. Any deficiencies in enablement or written description of the filed provisional should be made up as soon as possible in either subsequent provisionals or a full U.S. utility application to keep the inventor ahead of potential competition.

It has been suggested that the new law's requirement to file will hurt individual inventors and cause them to lose patent rights. However filing is less a financial burden than ever; a provisional application is still an economical way to file an application, even for individuals. The establishment of a micro-entity status for universities and any small entity of low income (that has not filed more than four previous applications on its own) makes filing one or more provisional applications more affordable by reducing fees by 75%. The greater danger is that individual inventors will not be aware of the change in the law and will neglect to file a provisional application expeditiously. Such individuals may rely on old guidance, such as dating and witnessing notebooks, or sending a registered letter to oneself with a written description of the invention, which will no longer be effective.

Other features of the new law are more specific and will lead to changes in best patent practice. These changes include: