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.
Note, however, that a dramatically different effective date
rule applies to determine for which patent applications a patent interference
can be filed, and some of the points made below do not apply to an interference situation. 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.
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 many Patent Cooperation Treaty (PCT) published patent applications as prior art will be earlier than
before. Under pre-AIA law, a PCT patent application published in a foreign language was
prior art as of its publication date, and many English-language PCT patent applications were prior art as of the PCT filing date. Under the AIA, many PCT patent applications will
have as the prior art date the first day a corresponding patent application was
filed anywhere in the world.
- Third, a US 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.