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Inventors Scramble to File Last-Minute Patent Applications

March 8, 2013

Overview

On Sept. 16, 2011, the America Invents Act was signed into law. It was the first major reinvention of patent law in more than 50 years.

Most of the major provisions of this revamp will go into effect on March 16. Patent attorneys across the country are working around the clock, scrambling to file as many patent applications for their clients as they can before that date. Why the scramble? An overview of the changes afoot should provide an answer.

The current U.S. patent system has been described as a "first-to-invent" system. Under the current system, an inventor who first conceives of an invention and diligently "reduces her invention to practice" (i.e., works to construct it in physical form) until the filing date of the patent application may claim priority over another inventor who may have come up with the same invention later but managed to file first. Thus, provided that the first inventor can prove her conception date and demonstrate diligence in reducing her invention to practice, she would be entitled to the patent.

Starting March 16, the system will switch to a "first-inventor-to-file" system. Under the new law, an inventor may be entitled to a patent if he or she manages to file the application for an invention before an inventor who may have independently conceived of the same invention first.

While the patent applicant must still be a true inventor of the claimed invention, it is no longer required that the inventor be the first true inventor, but rather the first to file an application for the invention (or publicly disclose it — more on this later). Thus, an earlier inventor will no longer have priority for the patent, even if he or she can prove an earlier conception date and diligent effort to reduce the invention to practice.

By switching systems, the U.S. is joining the rest of the world, where variations of the "first-to-file" system have existed for quite some time.

The "first-inventor-to-file" system will apply to all patent applications filed on or after March 16 — including some based on applications filed earlier. If such an application includes at least one claim of legal protection that is not based on the "pre-March 16" application, the whole thing will be subject to the new system.

The change also expands the scope of an invention's "prior art" — essentially information about the invention that has been made public before the filing, for example, in publications, sales, trade shows, etc. If an invention has been described in the prior art, a patent on that invention may not be granted.

Under the current system, prior art does not include public disclosures outside the U.S. Under the new system, there are no geographic limitations. So generally speaking, more prior art will become applicable in challenging an invention's patentability.

That is why companies and inventors have been trying to take full advantage of the current system before March 16.

If your company happens to own intellectual property assets (and many local software and biotech companies do), there is still some time to review these assets and proceed with patent applications before March 16.

As published Puget Sound Business Journal, March 8, 2013.

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