IP Alerts

January 30, 2013

On March 16, 2013, the final provisions of the America Invents Act (AIA) will go into effect. Under these provisions, the U.S. patent system is changing from a “first-to-invent” system to a “first-to-file” system. Accordingly, the first inventor to file a patent application will normally prevail over a second inventor who filed later in time, regardless of which inventor was first to invent. Any patent applications filed before March 16, 2013, will fall under the current law, while those filed on or after March 16 that do not properly claim priority to an application filed before that date will fall under the new law.

We believe that, in most situations, it will be advantageous to file any new patent applications before March 16, 2013, for inventions that are sufficiently developed. This will eliminate some potentially negative consequences of the new law. Under the new law, for example, these changes will occur: 

• The scope of what is considered prior art will be broadened. U.S. patents, U.S. publications, and PCT publications can be prior art under the new law as of their earliest filing date anywhere in the world. The new law, in other words, eliminates the so-called Hilmer rule. In addition, public disclosures and on-sale activity, which were previously limited to U.S. activity, will constitute prior art to U.S. patents and applications regardless of where in the world such disclosure or activity occurred.

• In most instances, priority of invention will be essentially irrelevant, and inventors will lose the ability to overcome certain prior art by proving an earlier invention date. Similarly, inventors generally will lose the ability to enter interference proceedings with competitor patents and applications. 

• The current one-year grace period, which previously removed some prior art references, will be more limited and will be coupled to public disclosures that are tied to the inventor. Additionally, a public disclosure of an invention will enable the inventor to overcome certain prior art references. Although an inventor might consider making an early public disclosure for the express purpose of overcoming later-published prior art, we generally do not recommend this approach, principally because such disclosure may affect patent rights in countries outside the U.S.

• Patents issuing from applications filed on or after March 16, 2013, are subject to challenge by others under a new post-grant review process, which expands the grounds upon which competitors can attempt to invalidate granted patents.

• Many companies are expected to accelerate filing efforts between now and March 15. In competitive fields, there may be other disclosures that will antedate any applications filed after March 15, and such later-filed applications will not be able to overcome the prior art status of the earlier-filed applications, even if, under current law, there would be priority of invention.

As with many changes in the law, there is some uncertainty surrounding the full interpretation of the new law. For example, there may be some ambiguity in terms of what actions and events may qualify as prior art. However, it will most likely take years of court decisions before such issues are resolved. Given these ambiguities, there are a few rare situations in which it is conceivable that it may prove advantageous not to file before March 16 even if the invention is sufficiently developed. We recommend that our clients consult with their Fitch Even attorneys for more details.

For the most part, however, given the known changes that the new law will bring, we believe it will be an advantage to accelerate the filing of most patent applications to sufficiently developed inventions to occur on or before March 15, 2013. This recommendation extends not only to domestic clients, but also to clients outside the United States. For those patent applications filed outside of the U.S. on or before March 15, 2013, corresponding applications can be filed in the U.S. within the one-year anniversary of the initial filing. If priority is properly maintained, such applications will continue to be handled under current law.

For more information, or if you have any questions, please contact your Fitch Even attorney or Fitch Even partners Mark W. Hetzler or Jeffrey A. Chelstrom.

In addition, on February 27, Fitch Even will be hosting a free CLE webinar, “American Invents Act First-to-File Changes:  What Happens Now?," presented by Jeffrey A.. Chelstrom. To read more and register, please visit our Webinars page.