By George F. Wheeler
The United States passed a radically new patent statute, the Leahy-Smith America Invents Act ("AIA"), on September 16, 2011. The AIA has some provisions already in effect and others that will become effective in the near future. This primer addresses the most important change of the AIA: The AIA will soon make patents more difficult to obtain and easier to defeat, in most instances.
A brief summary of this effect of the AIA follows.
1. EFFECTIVE DATE: The AIA will apply only to patent applications filed on or after March 16, 2013, regardless of when the resulting patents issue. It won't substantially affect the patent applications on file before that date, for which the previous rules will apply. By use of proper strategy, which is tricky, pre-AIA applications can be prosecuted for many years in the future and not ever be subject to the AIA.
[Related -Thoughts on MetLife and AIG]
Note, however, that a dramatically different effective date rule applies to determine for which patent applications a patent interference can be filed. Patent interferences already are very uncommon, and will not be important to most applicants. But patent interferences will still be available under certain circumstances for many years in the future, before the AIA phases them out.
2. CHANGE TO A 'FIRST-INVENTOR-TO-FILE" SYSTEM: Proof of when the inventors carried out experimental work or when they discovered their invention will have essentially no value for applications subject to the AIA. Nor will such proof be useful to others to attack patents subject to the AIA. In any contest between the first to invent and the first to file a patent application, the first to file will virtually always win, for applications and patents subject to the AIA.
[Related -A 2016 Recession Would Be Different]
3. PARING BACK THE GRACE PERIOD: In the US before the AIA, the rule has been that once the invention is disclosed or commercialized by anyone (including a competitor or total stranger), the inventor has had one year to file a patent application to avoid losing all rights. The one year period is called a "grace period."
Under the AIA, this grace period will be an exception to the rule, not the rule. The details of application of the new rule are complex, but the rule of thumb is simple. The only truly safe way to conduct oneself as of March 16, 2013, is to follow the rule that Europe and many other countries have had for a long time: assume no grace period whatever, and get a patent application on file before the invention is first published, offered for sale, or revealed anywhere in the world, in any manner.
4. EXPANDING ON THE SCOPE OF PRIOR ART: "Prior art" is all the information that legally existed before an application for the claimed invention was filed. Prior art has an "effective date" (not to be confused with the effective date of the AIA). Any information that is prior art can be used to show that an application or patent filed later is unpatentable or invalid. The AIA expands what is prior art in several respects.
- First, foreign public use or sale of the invention, which was never prior art before, will become prior art.
- Second, the effective date of U.S. and foreign published patent applications as prior art will be earlier than before. Under prior law, the foreign published patent application was prior art as of its publication date. Under the AIA, that prior art will have as its effective date the first day a corresponding patent application was filed anywhere in the world.
- Third, a U.S. patent application based on an earlier foreign patent application will have the earliest US or foreign filing date in the world as its effective date.
These new rules can make the effective date of prior art patents and patent applications earlier by up to 18 months. And again, you need to file an application before these new, earlier prior art dates, not just discover the invention first.
5. HOW TO PREPARE FOR THE AIA: To gain pre-AIA treatment for your patent application, which will usually be more favorable, you need to file a patent application disclosing and claiming the invention as fully as possible and as soon as possible, but definitely before March 16, 2013--no extensions of that deadline will be available. Plan ahead to avoid the rush, as everyone with an invention that wants to file a patent application will need to get their applications on file by the same deadline. Moreover, nothing is gained by waiting until just before the deadline. The purpose for filing this application is to avoid the more expansive AIA prior art rules, but also to obtain the earliest filing date possible. Even under pre-AIA law, the first applicant to file usually wins in a contest with a later filer who invented first.
There are a few niche areas in which the scope of prior art is reduced under the AIA, making it advantageous for a patent applicant to file a new or continuing application after March 16, 2013, to gain the benefit of the AIA. But this will be a rare occurrence. These rare occurrences can be dealt with by taking two steps:
- First, file a file a patent application as soon as possible claiming any invention that will benefit from post-AIA treatment. Don't wait to do this until March 16, 2013, so your claims benefitting from post-AIA treatment will have an earlier effective filing date.
- Second, on or after March 16, 2013, file a second patent application claiming priority to the first application and containing at least one claim NOT supported by the first application. This unsupported claim does not need to be one of the ones that benefits from post-AIA treatment.
By doing this, you will have claims with a pre-March 16, 2013, effective filing date that nonetheless benefit from post-AIA prior art rules--the best of both worlds.
There are many other changes already here, or coming, due to the AIA. Probably the most important of these are fundamental changes in how a US patent can be attacked in the U.S. Patent and Trademark Office. The AIA provides post-grant review, a new procedure much like opposition proceedings in Europe. The AIA also expands "prior user rights" enabling one who discovers and practices an invention commercially to continue practicing the invention even if someone else later independently discovers it and patents it.
Note that this is a brief summary, and is not exactly applicable to every instance or situation, or everything you might ever need to know about the AIA. But the above is in my view the core knowledge that every inventor and patent owner needs to possess in the near future to effectively deal with the AIA.