Patent Prosecution Strategies Under the Smith-Leahy America Invents Act

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The Smith-Leahy America Invents Act (Smith-Leahy Act) was passed by the Senate on September 8, 2011 and is expected to be signed into law by President Obama. Invention protection strategies and procedures should be evaluated in light of the new laws.

First-to-File

The most notable change to existing United States patent law is the implementation of a “first-to-file” rule, which grants patent protection to an inventor who files a patent application in the United States Patent Office before any other application is filed claiming the same technology. This is a significant change from the United States’ previous “first-to-invent” rule wherein patent protection was available to those who invented first, even if another inventor filed a patent application first. An exception to the new “first-tofile” rule addresses the potential conflict that would arise when the inventor of an earlier-filed application derived the claimed invention from an inventor claiming the same invention in a later-filed application. In such a situation, a derivation proceeding may be initiated by the second applicant within a limited time period. Upon review of evidence, the Patent Trial and Appeal Board (PTAB) will determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application, and if so, the PTAB may correct the inventorship of the application or patent. The aforementioned derivation proceeding replaces previous interference proceedings.

The “first-to-file” rule makes it imperative that all inventors are aware of the importance of filing patent applications early, and are diligent in doing so. An invention does not need to be reduced to practice before an application for patent is filed; consider using a preliminary “short-form” invention disclosure document to encourage and allow inventors to quickly put decision makers on notice of the development of innovative technology.

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