Securing Patent Rights under the America Invents Act
The passage of the Leahy-Smith America Invents Act (“AIA”) on September 16, 2011 has brought with it a flood of changes to United States patent law. These changes have incrementally come into effect over the last two plus years, with the final stage of implementation effective as of March 16, 2013. Arguably, the most dramatic change of the AIA is the first-to-file provision, which affects the novelty requirement for patentability.
Until March 16, 2013, the United States patent system awarded patent rights on a first-to-invent basis. This meant that the inventor who first conceived and reduced to practice an invention would be awarded patent rights to the invention, without regard to whether they were the first inventor to file an application with the Patent Office.1 To illustrate, consider this scenario: Inventor A conceives and reduces to practice an invention before Inventor B independently conceives and reduces to practice the exact same invention. Neither inventor publicly discloses his or her invention in any manner. Inventor B files a patent application before Inventor A files a patent application. In this scenario, under first-to-invent provisions, Inventor A will succeed in securing patent rights over Inventor B.
The AIA ushers into effect the first-to-file provision, changing the result of the above scenario. Under the new first-to-file regime, patent rights are granted to the first inventor to file a patent application. So, in the above scenario, Inventor B will acquire patent rights over Inventor A because Inventor B filed a patent application first. Ultimately, what the new first-to-file provision alters is the scope of prior art, which is information used by a patent examiner to defeat the novelty of a patent application. This expanded universe of prior art now encompasses any information or product that is “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” anywhere in the world, before the filing date of the patent application.2
Intertwined within the novelty requirement is the grace period provision. This allows an inventor to disclose his/her invention, under certain circumstances, without forfeiting his/her patent rights. The AIA retains the one-year grace period from the first-to-invent era with some changes. Under both the old and current novelty provisions, the grace period allows an inventor to publicly disclose his/her invention up to one year prior to filing a patent application without forfeiting his/her patent rights.3 Importantly, under the AIA grace period, the disclosure must originate from the inventor. If another individual discloses the invention, it will act as prior art against the inventor, even if the inventor files within one year of the other individual’s disclosure.4
While the AIA brings United States patent law more in line with the rest of the international community, there is some criticism that first-to-file forces inventors to rush to the Patent Office to file applications. Filing with the Patent Office can quickly become an expensive endeavor, but so too can losing your patent rights. So what can you, as an individual inventor or a company, do under the structure of the AIA to best protect your patent rights?
The first strategy is for you to actually get to the Patent Office as quickly as possible, but this does not necessarily require filing a non-provisional patent application. Instead, filing a provisional patent application is an alternative, which preserves the benefit of an earlier filing date, but is less burdensome in preparation. Unlike non-provisional applications, provisional applications do not require patent claims. Instead, the only substantive material a provisional application requires is a written description and any accompanying drawings necessary to understand the invention.5 The usefulness of filing a provisional application is two-fold: it effectively saves your place in line at the Patent Office because a non-provisional application can reference the filing date of the provisional application, and it is less expensive than preparing and filing a non-provisional application. Keep in mind that a non-provisional application can only date back to a provisional application for those claims that are supported in the provisional application, so be sure to include as complete a disclosure of your invention as possible to preserve the earlier filing date for all claims.
A second strategy is public disclosure of your invention, although this option comes with caveats. First, after publicly disclosing the invention, a patent application must be filed within the one-year grace period, or patent rights will be forfeited. Secondly, this strategy is useful if you are only seeking patent protection in the United States. Many international countries follow the rule of strict novelty, meaning that any prior disclosure, even by the inventor, will bar the inventor’s subsequent patent application. However, the benefit of publicly disclosing your invention within the grace period is that the disclosure will act as prior art against another independent inventor with the same invention; your disclosure will bar them from obtaining a patent on your invention.
These are two effective strategies that make the new AIA provisions work for, not against, you as an inventor. Navigating the intricacies of the new provisions in the AIA may appear daunting, but with proper planning and development of the right strategy, you can secure patent rights in your inventions.
1 In general terms, there were some exceptions to this rule.
2 35 U.S.C.S. 102(a)(1) (2013).
3 35 U.S.C.S. 102(b) (prior to AIA implementation); 35 U.S.C.S. 102(b)(1) (2013).
4 35 U.S.C.S. 102(b)(1) (2013).
5 35 U.S.C.S. 111(b) (2013).