The information contained in this article should not be construed as legal advice.
The third and final wave of provisions of the America Invents Act (AIA) will become effective on March 16, 2013, completing the overhaul of United States patent law that began with enactment of the AIA on September 16, 2011. These provisions will move the United States to a first-to-file system, greatly expand the definition of prior art and usher in the use of post grant review.
Beginning in mid-March, the United States Patent Office (Patent Office) will use a first-to-file system rather than the first-to-invent system that is currently in place. This means inventors will no longer be able to “swear behind” the date that they first conceived of their invention. Rather, priority will be determined by the patent application’s effective filing date — the date the application was filed or the filing date of the earliest application for which the application can claim priority. As a result, once the AIA takes full effect on March 16, 2013, speed to the Patent Office will be paramount, and clients will likely need to file patent applications earlier and may need to file follow-on applications more often than their current procedures require.
One way to avoid the AIA is to claim priority to an application filed before March 16. Non-provisional applications filed on or after March 16 will remain under current law if they claim priority to an application that was filed before March 16 and contain the same material as that prior application. If the non-provisional application filed on or after March 16 includes new material, it will be subject to the AIA and its first-to-file system, expanded prior art provisions and other procedures.
For private venture-backed companies, this will mean that they may need to spend money on patents, the patent process and the development of patent strategies earlier and more often than what is typical in the first-to-invent system.
Expansion of Available Prior Art
Under the AIA, prior art is defined as any invention that was patented, described in a printed publication, in public use or on sale or otherwise available to the public before the effective filing date of the patent application. There are no geographic requirements for prior art, thus, for applications filed on or after March 16, prior art can come from anywhere in the world and be in any language. Even more expansive is the catch-all phrase “otherwise available to the public,” which inserts a great deal of uncertainty as to how it will be interpreted.
There is a very narrow exception for disclosures that are made within one year of the effective filing date by the inventor or an individual who derived his/
her invention from the inventor’s disclosure. However, this exception should not be relied upon due to, for example, the uncertainty surrounding interpretation of “derive” and the difficulty one is likely to encounter when trying to prove derivation.
Post Grant Review
Anyone who has not first initiated a civil action will be able to challenge a patent filed after March 16 through post-grant review. In order for review to be granted, the petitioner must request review within nine months after the patent is granted and demonstrate that it is more likely than not that one of the patent’s claims is unpatentable.
The combination of the expansion of available prior art and post-grant review means that obtaining a patent for an application filed on or after March 16 will likely be much more difficult than under current law. On the other hand, petitioners will be stopped from bringing a civil action or proceeding in the Patent Office on any ground that was raised or reasonably could have been raised during the postgrant review.
Takeaways and Recommendations
- Avoid the expanded prior art provisions and the uncertainty of the new AIA procedures by ensuring that the company’s patent is subject to the current first-to-invent rules.
- For inventions that have early invention dates, file patents before March 16.
- Prioritize applications that have conception dates prior to September 16, 2012 (the date the first wave of AIA provisions became effective).
- Consider providing as much detail as possible in any provisional applications that the company intends to file before March 16.
- Before March 16, file applications that add new material to previously filed applications.
- For child applications filed on or after March 16, consider filing two applications, with one application containing the most well-supported claims, in order to maximize the company’s ability to maintain pre-March 16 priority.
- Consider revising internal policies and procedures to account for the new prior art provisions.
- Evaluate the company’s policies regarding prior approval of public disclosures to ensure that the company will not need to rely on the one-year exception. This includes policies regarding publications, conferences, press releases and social media. If the company does not currently have such policies, consider putting them in place.
- Evaluate the company’s procedures for developing and patenting new technology. Updated timelines may be necessary to enable the company to be the first to file. Consider filing follow-on provisional applications for all important developments in order to secure earlier effective filing dates.
1 35 U.S.C. § 102(a), as amended.
2 35 U.S.C. § 100(i), as amended.
3 35 U.S.C. § 102(a), as amended.
4 35 U.S.C. § 102(b), as amended.
5 35 U.S.C. § 325(a)(1).
6 35 U.S.C. §§ 321(c), 324(a).
7 35 U.S.C. §325(e).
Richard G. Frenkel: Rick Frenkel is a litigation partner in the Silicon Valley office of Latham & Watkins. He has experience in every aspect of patent litigation, from initial investigations through trial and appeals. Prior to joining Latham, Mr. Frenkel served as the Director of Intellectual Property for Consumer and Emerging Technologies at Cisco Systems.
Filed under: Business, Entrepreneur
This article originally appeared on VentureBeat
Photo credit: Salvatore Vuono
Just because they call it "reform" doesn't mean it is.
"patent reform"...America Invents Act, vers 1.0, 2.0, 3.0...
“This is not a patent reform bill” Senator Maria Cantwell (D-WA) complained, despite other democrats praising the overhaul. “This is a big corporation patent giveaway that tramples on the right of small inventors.”
Senator Cantwell is right. All these bills do is legalize theft. Just because they call it “reform” doesn’t mean it is. The paid puppets of banks, huge multinationals, and China continue to brain wash and bankrupt America.
They should have called these bills the America STOPS Inventing Act or ASIA, because that’s where they’re sending all our jobs.
The patent bill (vers 2, 3, etc) is nothing less than another monumental federal giveaway for banks, huge multinationals, and China and an off shoring job killing nightmare for America. Even the leading patent expert in China has stated the bill will help them steal our inventions. Congress passed it and Obama signed it. Who are they working for??
Patent reform is a fraud on America. Congress and Obama are both to blame. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and destroying their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. They have already damaged the US patent system so that property rights are teetering on lawlessness. This bill will only make it harder and more expensive for small firms to get and enforce their patents. Without patents we cant get funded. In this way large firms are able to play king of the hill and keep their small competitors from reaching the top as they have. Yet small entities create the lion's share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale destroyer of US jobs. Those wishing to help fight this bill should contact us as below.
Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Congress and Obama tinkering with patent law while gagging inventors is like a surgeon operating before examining the patient.
Those wishing to help fight big business giveaways and set America on a course for sustainable prosperity, not large corporation lobbied poverty, should contact us as below and join the fight as we are building a network of inventors and other stakeholders to lobby Congress to restore property rights for all patent owners -large and small.
Please see http://truereform.piausa.org/default.html for a different/opposing view on patent reform.