IP: America Invents Act implementation ends with a bang

Three significant changes in U.S. patent law will result from this final phase of implementing the AIA

The America Invents Act (AIA), signed into law Sept 16, 2011, has brought about the biggest change in U.S. patent law since the 1952 Patents Act. The 37 sections of the Act, its multiphase implementation, and the ink spilled in communicating its significance are ample testament to that fact. The final phase of implementation of this Act will arrive in a few short months. With the AIA having been around for some time and other areas of the law competing for the attention of in-house counsel, there is a risk that several significant aspects of the final phase of AIA implementation could be overlooked by some. With that in mind, this article focuses on three significant changes in U.S. patent law resulting from this final phase of implementing the AIA.

  1. First-inventor-to file system – date of invention loses significance
  2. Grace period is narrowed to disclosures originating with inventor
  3. Challenge to competing inventor limited to derivation of invention

The final phase of AIA implementation, occurring on March 16, 2013, will convert the U.S. patent system from a first-to-invent system to a first-inventor-to-file system, advancing the goal of harmonizing the U.S. patent system with systems used in other countries. This shift to a first-inventor-to-file patenting system is one of the more noteworthy changes resulting from the AIA. A first-inventor-to-file patenting system can be seen as favoring big business at the expense of sole inventors, business start-ups and many non-profits. Established enterprises typically have in-house legal counsel networked to outside counsel in a manner designed to efficiently secure patent protection for technological innovations, and the little guy will be challenged to arrive first at the U.S. Patent & Trademark Office (USPTO) seeking protection for similar or identical technology. Beyond the commercial implications of this change in U.S. patent law, it is worthwhile to see how the U.S. is bringing about that change.

Section 102(b) as revised by the AIA defines a grace period as an exception to the prior art definitions of § 102(a). The grace period applies to the public disclosure of an invention within one year of the effective filing date of the application disclosing and claiming that invention, but only if the disclosure was by an inventor or one who obtained the invention from an inventor. No longer can an inventor antedate a disclosure by another within one year of the effective filing date, unless that disclosure was obtained from the inventor. Thus, the grace period provided by the AIA is considerably narrower than the grace period defined by pre-AIA § 102. An inventor’s disclosure within the one-year grace period, however, eliminates from prior art any subsequent disclosures of the same invention by others, such as disclosures by another occurring after an inventor’s disclosure but before that inventor effectively files a patent application. At first blush, one might think that early public disclosure by the inventor could be used to protect the patentability of an invention while an application is prepared, but such a strategy would be costly in surrendering most foreign patent rights.

Beyond the narrowly defined grace period, the AIA has created a new proceeding for challenging a race winner’s right to a patent. The loser of the race to the USPTO can challenge the first-filer’s right to a patent by petitioning for a derivation proceeding before the Patent Trial and Appeals Board. If the fact that two inventors sought patents on the same invention is not discovered until both have issued patents, recourse is available in federal district court. The new derivation proceeding has been loosely characterized as a substitute for interference proceedings, which are being put to pasture by the shift from first inventor to first-inventor-to-file. This characterization is dangerously misleading.

Contributing Author

author image

William Merkel

William K. Merkel, Ph.D., is a partner at Marshall, Gerstein & Borun LLP in Chicago, Illinois. For nearly twenty years, Bill has been...

Bio and more articles

Join the Conversation

Advertisement. Closing in 15 seconds.