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America Is Switching to the First Inventor to File System

On March 16, 2013, the United States switches to the "First Inventor to File" patent system.This change was established in the America Invents Act (AIA).

The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011. Some changes under the AIA were effective immediately, and a number of other changes became effective one year later on September 16, 2012. On March 16, 2013, however, the greatest change to the U.S. patent system in 60 years will take effect, as the third and final phase of the AIA is implemented. The most significant change under the AIA is that the U.S. patent system will switch from the current first-to-invent system to a first-inventor-to-file (FITF) system. You and your company need to understand how this change will affect current practices regarding the filing of patent applications and to begin preparing for this change now.

Under the current first-to-invent system, the first inventor to invent the subject matter of a patent application is entitled to the patent over later inventors. Moreover, the current law provides a one-year grace period in which to file a patent application after a public use, offer for sale or sale in the U.S. or description in a printed publication anywhere in the world of the invention. Thus, the first inventor is entitled to the patent even if the first inventor is not the first to file a patent application on the invention, so long as the first inventor files within the one-year grace period.

Under the new FITF system, the first filer of a patent application (even if not the first to invent the subject matter of the patent application) will be entitled to the patent, as long as the first filer was himself an inventor and did not derive the invention from the first inventor.

The AIA also significantly expands the scope of what constitutes prior art to the invention. For all applications filed after March 15, 2013, prior art may bar patentability if "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." 35 U.S.C. § 102(a)(1). Thus, after March 15, 2013, prior art will be defined by the filing date, rather than the invention date. In addition, the definition of prior art will encompass foreign disclosures, public uses, and items on sale, to the same extent as those occurrences in the United States. Therefore, a disclosure of the invention anywhere in the world made by a third party before an inventor files a patent application will prevent that inventor from receiving a patent.

The AIA retains the one-year grace period in which to file a patent application, but the grace period will apply only to publication of the invention by the inventor or someone who has directly or indirectly obtained the invention from the inventor. (Note, however, that such a publication will constitute prior art in countries with absolute novelty patentability requirements.)

The AIA has also created new post-patent issuance review procedures that can be used by third parties to challenge the validity of patents issued on applications filed after March 15, 2013. One new procedure is the Post Grant Review petition, which may be filed in the U.S. Patent and Trademark Office (USPTO) within 9 months after a patent issues to challenge the patent's validity on any ground available in the law. Under the current system, patents may only be challenged in the USPTO based on prior art.

Accordingly, time is of the essence under the AIA to file applications as early as possible. Therefore, we recommend that your company evaluate its current invention disclosure submission and evaluation procedures to determine if they could be made more efficient. For example, you might encourage inventors to submit disclosures as soon as they conceive of inventions and review these disclosures on a more regular basis in order to begin the patent application preparation process as early as possible. In many cases, we may recommend that provisional applications be utilized to secure an early filing date, even if your company has not yet determined the commercial value of an invention. Under the AIA, it will also be even more important for inventors to document their inventive activities and to ensure that patent applications are on file before disclosure of any inventions to third parties. Please do not hesitate to contact us with any questions you have regarding the AIA or the status of your currently pending applications or invention disclosures. We look forward to continuing to provide quality service and helping make the transition to the new patent system under the AIA as seamless as possible. 

The information contained in this publication is general legal information and should not be construed as legal advice to be applied to any specific factual situation. If you would like additional or more specific information, please contact one of the attorneys at Wood Herron & Evans LLP.

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