New Patent Reform Act

Congress recently overhauled the Patent Laws by passing the Leahy-Smith America Invents Act ("AIA"). The greatest change under the AIA started in March 2013. That is when the United States shifts from a first-to-invent to a first-to-file system. Only the first person to file a patent application can receive a patent. There is one exception. Basically, if a prior inventor (or Company) publicly disclosed the invention beforehand and filed a patent application within 12 months after that disclosure, this prior inventor should prevail.

There is no more one-year grace period for an inventor to keep an invention totally secret before deciding to file a U.S. patent application. Someone else – a "junior" inventor – can beat the earlier inventor to the U.S. Patent and Trademark Office (the "Patent Office"); and the earlier inventor cannot later prevail.

Another AIA change is the expansion of the "prior user rights" defense. A prior inventor might be immune from patent infringement if it commercialized the patented invention at least one year before the effective filing date of another person's patent application. This defense was previously available to a person or company accused of infringing a business method patent. It now applies to all types of issued U.S. patents.

Other changes include procedures for challenging patent applications and issued patents at the Patent Office. Theoretically, they potentially preempt litigation on patents that never should have been granted. Such reviews however may pose high risks for the challenger. For example, a recertification of a patent may make the patent tougher to invalidate in court. After all, a judge may think, the Patent Office has ruled twice that the patent is valid.

AIA TIPS: Most companies should file provisional patent applications initially rather than non-provisional patent applications (a.k.a. "regular" or "Utility" applications) before initially disclosing their inventions or offering them for sale (e.g., at trade shows). A provisional application is an informal, yet complete, disclosure of an invention filed at the U.S. Patent and Trademark Office. The provisional application is not prosecuted by the Patent Office and does not, by itself, result in a patent. It buys the inventor (or his assignee) one year to decide whether or not to file a regular patent application. If the regular application is filed within that year, the regular application can date back to the provisional application.

File those provisional applications as soon as possible after creating inventions. Update your provisional applications upon creating major changes (e.g., for a production model). This approach may avoid having someone beat you to the Patent Office.

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