The Leahy-Smith America Invents Act ("AIA") was passed by Congress and signed into law in September 2011. The AIA represents the most significant change to U.S. patent law in over 50 years. Most significantly, the AIA aligns parts of U.S. Patent law with that of other countries, provides for a faster examination option, and opens up the playing field for submission of prior art. What are these portions, and when do they take effect? Well, let’s take a look.
If you have an idea, you may not want to sleep on it - the AIA changes U.S. patent law from a first to invent to a first to file system, the system used in most countries. If two inventors separately and independently conceive the same invention, the first one to file a patent on the invention will own the rights to the invention. A prior user who does not file a patent on an invention which someone else does file a patent application on, however, might be able to continue using the invention if they first used the invention for more than one year before the application covering the invention was filed by another.
The AIA also allows you to pay to move to the front of the line – via "Track 1" accelerated examination. Track 1 provides for an accelerated examination schedule for a fee, currently about $4,800.00. The accelerated examination should provide a final disposition(allowance or a final office action) within 12 months of prioritized status being granted.
Also under the AIA, third parties may submit prior art in an application of another. The deadline for submitting prior art by a third party is the later of the first office action mailing or six months after publication of the patent application.
These are some of the major changes that could potentially affect most entities in obtaining a patent. Other provisions of the AIA provide for an entity to file an application on behalf of inventors with assigned rights or an obligation to assign IP rights to the entity, updates to false marking which limits filing a claim to the government or a competitor with injury and which allows marking with an expired patent, elimination of interference proceedings and introduction of a derivation proceeding to determine original inventorship and rule out derivation.
Mark your calendars, as the provisions take effect (or took effect) as follows: September 16, 2011: Prior Use Defense, False Marking changes; September 26, 2011: Track 1 prioritized filings; September 16, 2012: Third party prior art submission, entity application filing on inventor behalf; March 16, 2013: first to file, derivative proceedings.
In light of these changes, I’m advising my clients to embrace the changes and use them to your advantage. First and foremost, I suggest that my clients start now to develop an internal process for identifying patentable subject matter quickly and efficiently. The streamlined process should consider new IP once or twice a month, and enable a quick turnaround for getting inventions protected if their process provides a green light. Provisional applications can be a quick and efficient way to get an application on file, along with a process for reviewing the business value of an invention a few months before the provisional application expires. Dates of technology usage and development should be recorded, not to establish first conception but for trade secret programs and establishing a prior user right defense. Entities may also consider performing quarterly searches for competitor published patent applications and consider submitting prior art if needed. All companies should also have solid IP assignment provisions in their employment agreements, as well as properly executed assignments for all IP.