Major Patent Reform Provisions Take Effect on March 16

When Congress passed the America Invents Act (AIA) in 2011, it provided for an extended transition period to enable business to adjust to the United States abandoning the traditional “first to invent” system and joining the rest of the world in using a “first inventor to file” system. That change will become effective on March 16, 2013.

The most significant change is that the U.S. will abandon its very complicated system for determining who gets the patent when two people claim to have invented the same technology. Instead of trying to determine who was the first to invent (using such factors as “conception” and “reduction to practice”), the patent office and the courts will usually now award the patent to the first inventor who files a patent application on the technology. The word inventor is significant: it will not be possible for a non-inventor to “steal” the patent by learning about the invention from the inventor and then winning the race to the patent office.

In addition, the AIA provides new rules for determining what kinds of pre-filing disclosures of the subject matter of the invention, or “prior art,” will preclude a patent. In most cases, inventors can maximize their chances of getting a patent by filing a provisional patent application promptly after making an invention, and then filing a non-provisional patent application within one year. In some cases, inventors may instead elect to disclose their invention and then file a patent application within one year of that disclosure.

The AIA will apply only to new patent applications that have one or more claims that have an “effective filing date” date on or after March 16, 2013. “Effective filing date” means the earlier of the actual filing date or any other prior date that the application may be entitled to. But there will continue to be a transition period for patent applications in which both the old rules and the new rules will be relevant. For example, an inventor could choose to have the old rules apply by filing a provisional patent application before March 16, 2013, but then change her mind and elect to use the new rules by adding new claims when the non-provisional application is later filed. This could be significant in determining the patentability of the invention. Not only are earlier inventors treated differently under the two sets of rules, but the scope of disabling prior art will also be different, depending on whether or not the AIA applies.

Inventors and companies need to be conscious of these changes in planning their patent strategy. As we discussed last year, provisional patent applications will become a more important tool in enabling inventors to become the “first inventor to file” at a low cost. On the other hand, inventors should not use the change as an opportunity to abandon the traditional written records, since the date of inventorship may still be relevant in determining whether a particular invention is truly new, or is just derived from another inventor’s work.