The Upcoming “Patent Cliff”: Plan to File New Patent Applications Before March 16, 2013

by Bradley Arant Boult Cummings LLP

On March 16, 2013, one of the most important and controversial provisions of the “Leahy-Smith America Invents Act,” or AIA, is scheduled to take effect and this event will mark a significant change in United States patent filing strategies. Specifically, the new AIA provisions amend the Patent Act to convert the United States from a first-to-invent system to a first-to-file system. In addition, the well-known and often used one-year grace period which allows a United States patent application to be filed within one year after a sale or public disclosure will largely be eliminated. These provisions become effective on March 16, 2013.

The consequences of these amendments, and other changes related to how the U.S. Patent and Trademark Office treats prior art, will have serious negative repercussions on the patent rights conferred by any U.S. patent application that is filed on or after March 16, 2013 and create a “patent cliff.”

From “First to Invent” to “First to File”
Currently under U.S. law, when two inventors independently conceive the same invention and each files a U.S. patent application for the invention, only the inventor who can prove the earliest date of the mental conception of the invention is eligible for a patent. This has long been true in the United States and has not depended on whether or not that inventor was the first to file a patent application. As a result, the U.S. has been known as a first-to-invent patent jurisdiction.

However, all U.S. patent applications filed on or after March 16, 2013, will be subject to the new first-to-file system which will permit only the first inventor who files a U. S. patent application to be eligible to receive the patent. The first-to-file system will not be concerned with whether or not the filing inventor was the person who invented first; it will consider only whether that inventor filed first. So, on and after March 16, 2013, when two inventors independently conceive the same invention, only the inventor who files the earliest patent application will be eligible to receive the patent.

The first-to-file system has the advantage of simplicity. It is difficult to prove when a person first mentally conceived of an invention, but it is easy to prove the date on which a patent application was filed. This enhanced simplicity, however, comes at a cost: instead of rewarding the earliest inventor, it rewards the inventor who wins the race to the patent office.

Elimination of the One-Year Grace Period
The March 16, 2013, AIA changes also include eliminating the one-year grace period to file a U.S. patent application and replacing that rule with a more complex arrangement. [Under the current rule, if an inventor files a U.S. patent application within one year after publicly disclosing the invention, the inventor can obtain a patent (assuming the inventor can prove a date of invention prior to the date of the public disclosure).]

The one-year grace period generally has allowed sufficient time to determine whether the invention is valuable and warrants patent protection, and to prepare a carefully drafted patent application. Eliminating the grace period will significantly increase the difficulty of obtaining and defending patents. While there is still a limited grace period for disclosures by the inventor, the one-year grace period historically enjoyed by U.S. patent applicants will be no more.

If you are accustomed to relying on the one-year grace period, you should consult with experienced patent counsel regarding the March 16, 2013, changes regarding prior disclosures.

What Do You Need to Do?
These “patent cliff” changes have real consequences. To take advantage of the current first-to-invent system and one-year grace period, you should act quickly and plan to file your patent applications before March 16, 2013, if at all possible.

Because drafting a patent application requires significant time and effort by the inventor and his or her patent lawyer, do not delay in retaining experienced patent counsel and allow at least four (or preferably six) weeks to prepare each application.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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