Living the First-Inventor-to-File Lifestyle

 Big Changes Under the AIA

This month, some major changes to the U.S. patent laws will go into effect. These provisions enacted in the America Invents Act (AIA) change the U.S. patent system from a “first-to-invent” system (unique among IP systems) to a “first-inventor-to-file” system. All patent applications filed on or after March 16, 2013, will be affected by the new laws.

So what practical effect does this change have on businesses that protect their technology with patents? Here’s a few of the significant changes the new law provides:

1. First filer at the USPTO (usually) wins. The first person or company that files a patent application covering a particular invention will gain protection of that invention, not the first person who invents it.
2. More “prior art.” The universe of information that can be considered prior art and may be used to reject or invalidate a patent will expand significantly. For example, the definition of prior art in the patent statue now includes prior public uses and sales of that technology that occurred outside the U.S.
3. Research agreements save the day. Some art that might have invalidated a patent under the old law may no longer be a problem if a joint research agreement covered it before the patent application was filed.

How should businesses react to this new patent law? Well a couple of changes in business practices may be in order:

1. Programs for fast-tracking important technology. If a particular invention relates to the company’s core business or otherwise shows significant commercial value, it should be turned into a patent application and filed at the U.S. Patent Office quickly.
2. Check-list for joint development programs. Carefully-written joint research agreements may now protect technology that could not previously be patented. These agreements should be executed before filing a patent application related to collaborative work.
3. File early and often? If there’s a question about whether a technology is useful or commercializable, a company may want to file a provisional application to preserve its priority status while evaluating whether it makes sense to move forward with the technology.

This transition to a first-to-file system, along with the other provisions of the AIA, will change how and to whom U.S. patents are granted, and how the patents are defended if they are challenged at the Patent Office or in Court.

Photo credit: US Mission Geneva.