Most Important Change to U.S. Patent System Under America Invents Act (AIA) will Occur March 16, 2013

January 24, 2013, 9:39 AM

Many of the changes to the U.S. patent system effected by the Leahy-Smith America Invents Act of 2011 (AIA) have already been implemented, but the most important of them will not take effect until March 16, 2013. This is the change of the U.S. patent system to one in which the right to obtain a patent on an invention will belong to the first inventor to file an application with the U.S. Patent and Trademark Office, instead of the first inventor to have conceived the invention. There is some anticipation that the change will result in races to the patent filing office, or give an unfair advantage to large companies over their smaller competitors, or lead to new strategies for the timing of public disclosures of inventions. But just how many of these consequences will occur, and their extent, remains to be seen.

What can be safely said at this point is that the same best practices for protection of patentable inventions that apply today will, by and large, still be best practices after the March 16, 2013 transition date. Those best practices include:

  • Systematic assessment of the patentability of any invention, and whether it has sufficient novelty and value to be worth the time, trouble and cost of seeking patent protection for it.
  • Earliest possible filing of a provisional or non-provisional patent application with the U.S. Patent and Trademark Office on any invention that appears to have sufficient novelty and value.
  • Filing of such an application whenever possible before any publication or other public disclosure of the invention.
  • For an invention as to which a decision is made not to pursue patent protection, and for which trade secret protection is not appropriate, publication of sufficient details about it to preclude someone else from obtaining a valid patent on the same invention.
Early filing of a U.S. patent application -- in many cases a provisional application -- on a potentially valuable invention will be even more important after the March 16 transition date, because, unlike under current rules, the possibility of challenging or invalidating a competitor's patent on the same invention by proving you conceived it before they did will no longer be available. Subject to certain limited exceptions, after the transition date the first inventor to file an application with the U.S. Patent and Trademark Office will be the one entitled to a patent on the invention, even if there is clear proof that someone else conceived of the same invention before they did.

One other important thing to keep in mind with regard to this change in the U.S. patent system is that patent applications filed on or before the March 16 transition date will be subject to existing rules rather than the new ones. So any potential owner of patent rights who is procrastinating on calling a patent professional about getting an application on his or her invention prepared and filed may want to do that quickly, so as to allow for preparation and filing of the application on or before March 16 if there is reason to think the existing rules will be more favorable to them than the new ones. --Robert E. Smartschan