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:

• Different provisions will have different effective dates.
• Material disclosed in a patent application is effective as prior art as of the earliest priority date that includes the material, not just the filing date of the application--thus, it appears, a provisional application and prior foreign application can be used offensively and not just defensively
• A prior disclosure in a patent/application is not prior art if commonly owned at the time of filing a later application--so it appears one can create a joint venture with an owner of a prior patent/application to remove it as prior art before filing a new application.
• A substitute statement in oaths or declarations on new applications can be used when a person obligated to assign the invention refuses to sign the declaration.
• An assignee may file an application
• The one-year grace period is retained in the U.S. for one's own work--thus it appears that a second-to-file inventor can obtain priority over a first-to-file inventor, if the second-to-file inventor publishes the invention before the first application is filed and files his own application any time within a year of publication date (but note that the second-to-file inventor will lose his right to file in other countries because of the publication).
• One may pay an additional prioritized examination fee of $4,800 to get disposition by Examiner in about 12 months for a limited number of independent and total claims (about 4 and 30).
• Third parties can submit relevant art before a final action on merits.
• There are revised procedures for third party (inter partes) review.
• There are new mechanisms for Post Grant review for patents of first inventor to file.
• Besides the above changes in the law, there will be rule changes (currently published for review) to comport with the new law.