By: Emma Saffman
On March 16, 2013 the final provisions of the America Invents Act (AIA) will come into force in the U.S. On this day a major change in U.S. patent law will take effect – namely, a shift from first-to-invent to first-inventor-to-file. What does this mean? Inventors will no longer be able to “swear behind” prior art disclosures based on an earlier date of invention. Instead, it will be a race to the patent office; the first to file a patent application will (with some exceptions) be the winner of a patent.
The AIA also changes the rules for prior art considerably. U.S. patent applications and patents will now be prior art for both novelty and obviousness as of their effective filing date, which includes foreign priority dates. Public use and sales outside the U.S. will also constitute prior art under the new law. Thus there will no longer be geographic limitations to prior art. Further, although a one-year grace period for disclosures by the inventor(s) will still apply, this grace period will no longer apply to patents and printed publications by others.
Because the AIA will significantly broaden the amount of prior art which can be cited against a patent application/patent, many practitioners are advising innovators to file patent applications for new inventions before March 16. Applications filed before March 16 will continue to fall under existing law, and existing prior art provisions. Accordingly we suggest you circle March 15, 2013 on your calendar! Here are the top 5 steps to take no later than March 15, 2013 to prepare for the AIA:
1. File new patent applications intended for filing in 2013.
2. File updated provisional applications.
3. File nonprovisional applications (including U.S. nonprovisional, PCT and CIP applications) where new subject matter is to be added.
4. Get the chain of title (inventorship, assignments, or at least obligations to assign) in order before filing new patent applications.
5. Get collaborative research agreements in place/signed for jointly developed inventions which are the subject of new patent applications.
Steps #1-3 will ensure that subject matter has the earliest possible effective filing date. Step #4 allows use of new provisions (already in place) for filing applications in the name of the patent owner instead of the inventor, and for lessening formal requirements for inventors. Finally, finalizing collaborative research agreements allows you to take advantage of new provisions stating that applications which are commonly owned at the time of filing are not citable as prior art against one another.
Keep posted for further articles about preparing for the AIA.
Next up – Avoiding pitfalls.