While the America Invents Act (AIA) involves US laws, its ramifications are of potential interest to applicants around the world. While most of the AIA’s provisions are already in force, the final changes that come into force on March 16, 2013 are arguably the most critical.
Perhaps most significantly, the US will lose its unique status as a first-to-invent jurisdiction. Previously, patent rights were granted to the first inventor who conceived of the invention and reduced it to practice (or diligently worked towards reducing it to practice). For applications filed from March 16, 2013, it will be the first inventor to file who will get the patent rights. The date of invention is now irrelevant.
The significance of this change cannot be overstated. It aligns the US with just about every other country in the world. US attorneys with foreign filing experience will be familiar with the issues that any form of first-to-file system raises. We highly recommend seeking out detailed commentary if you haven’t looked into it in detail yourself.
Another major change coming on March 16, 2013 is the definition of prior art for assessing patentability. For applications filed before then, prior art includes various uses (including sale) in the US, or written disclosures anywhere in the world. The AIA changes this so that any form of disclosure anywhere in the world forms part of the prior art. There is a limited exception to this – publications by the inventor up to 12 months before the patent application filing date aren’t part of the prior art.
Finally, the change to first-inventor-to-file means that interference proceedings are no longer required. Instead, a derivation proceeding will be available. This enables an inventor to challenge the owner of patent with an earlier filing date, where the challenging inventor believes the earlier filer derived the invention from the challenging inventor.
So those are the remaining changes to the law, but what changes in practice are required?
BRING FORWARD INITIAL FILINGS
If you have an invention for which no application has yet been filed, consider hurrying things up and filing it before March 16, 2013. If you wait until after that, you risk filing later than another who has come up with the same invention. Unlike the situation prior to March 16, 2013, you won’t be able to gain the patent rights by proving earlier inventorship.
CONSIDER FILING FURTHER APPLICATIONS
If you file (or have already filed) a priority application prior to March 16, 2013, the pre-AIA rules will apply to any subsequently filed non-provisional or PCT application claiming priority back to the priority application. Worryingly though, if any new matter in the subsequent application is presented in a claim, the entire subsequent application will be treated as filed under the post March 16, 2013 provisions.
Applicants should therefore consider discussing with their patent attorney whether it makes sense to bring forward filing of any US non-provisional, PCT, or continuing applications to before March 16, 2013.
FILE EARLY, FILE OFTEN
The broader prior art definition and more limited grace period provisions mean that inventors (and applicants) should be more wary of how they deal with technical information related to potentially patentable subject matter. The shield of first inventorship will be removed, so pre-filing disclosures of any sort should generally be avoided. The grace period for disclosures by the inventor should be considered a fallback for the situation where an accidental disclosure takes place.
Also, where an invention is being developed over a period of time, consideration might be given to filing a series of provisional applications at suitable development points. These could be filed throughout the priority year, and then a PCT or non-provisional filed claiming priority to all of them. This reduces the risk of waiting until the invention is completely developed before filing the first application. This approach must be balanced, of course, against filing with incomplete or inadequate disclosure.
THE PCT AND AIA
Remember that a PCT application is legally a US patent application (as well as a patent application in 130+ countries and regions). That’s why you can file a US continuing application from a PCT application. This means that any considerations you might give to filing non-provisional US applications prior to the March 16, 2013 deadline should also be given to potential PCT applications.
This has been a necessarily brief overview of the complicated issues raised by the final round of AIA provisions. It should not be treated as legal opinion. Only your US patent attorney can give you legal advice, which will take into account your particular circumstances and business intentions. Even so, we hope that the above gives you something to think about as the final historic provisions of the AIA come into force.
Please feel free to leave a comment below or contact us directly if you have questions.