Top Ten Reasons To File Your Patent Applications Before March 16, 2013

by Pepper Hamilton LLP

The recently enacted America Invents Act (AIA) introduces major changes to the U.S. patent laws, with some significant provisions taking effect on March 16, 2013. These provisions provide several compelling reasons to file patent applications prior to this date to claim inventions that are ready for patenting.

1. From March 16, 2013, it's a race to the Patent Office.

As of March 16, 2013, AIA changes the “first-to-invent” rule to “first-inventor-to-file” rule under which an inventor will be denied patent protection for subject matter claimed in a patent application if that subject matter is disclosed in an earlier patent application of another inventor. An inventor who waits to file a patent application after this date runs the risk that another inventor may file a patent application directed to the same subject matter at an earlier date and hence prevail in obtaining patent protection. On the other hand, an inventor who files a patent application prior to this date can potentially rely on the date she made her invention, rather than the date she filed her patent application, to prevail over another inventor’s claim.

2. From March 16, 2013, inventors cannot overcome prior art by showing they made their inventions before publications by others.

Under the “first-to-invent” rule, an inventor may be able to overcome a rejection based on an earlier publication published up to a year prior to the effective filing date of a patent application, if the inventor can show that the invention was made prior to the publication date. This option will not be available for patent applications filed after March 16, 2013, though AIA provides a narrow exception that allows an inventor to rely on her own publication within a year of filing to overcome subsequent publications by others.

3. For applications filed on or after March 16, 2013, inventors may face rejection based on oral disclosures by others.

The expanded definition of prior art under AIA will also take effect on March 16, 2013, thus providing another reason for filing patent applications prior to this date. Under the new regime, the prior art includes not only written but also oral public disclosure including oral disclosures. For applications filed before March 16, 2013, oral disclosures are not necessarily deemed as prior art.

4. For applications filed on or after March 16, 2013, inventors may face rejections based on prior use or sale of the invention abroad.

Under the AIA-expanded definition of prior art, use or sale of an invention anywhere in the world, including in a foreign country prior to the effective date of an application, is deemed as prior art. In contrast, for applications having an effective filing date prior to March 16, 2013, use or sale of the invention in a foreign country is not necessarily considered prior art.

5. For applications filed on or after March 16, 2013, foreign patent applications by others may become more potent as prior art.

Under the new regime, published patents and patent applications (including published international applications) that claim priority to foreign patent applications will be deemed prior art as of their foreign priority dates, rather than their effective U.S. filing dates.

6. Applications filed prior to March 16, 2013 can form the basis for filing one or more continuation applications after March 16, 2013.

A patent application filed before March 16, 2013 can be relied on as a parent application for filing one or more continuation applications after March 16, 2013 that claim priority to it. The continuation application(s) will be examined according to the “first-to-invent” and pre-AIA prior art rules. This allows an inventor to mine the subject matter disclosed in the parent application for additional claims after March 16, 2013 without being subjected to the “first-inventor-to-file” rule and the expanded prior art mandated by the AIA.

7. Lack of case law creates uncertainty for interpretation and enforcement of patents to be issued from applications filed after March 16, 2013.

While there is a significant body of case law interpreting patentability requirements under the “first-to-invent” regime, the courts have not even begun to interpret the “first-inventor-to-file” and the expanded prior art provisions of AIA. This lack of case law creates uncertainty regarding the scope and the enforcement of patents to be issued based on applications filed after March 16, 2013.

8. Patents issued based on applications filed after March 16, 2013 will be subject to post-grant review.

The AIA also provides new mechanisms for the public to challenge granted patents. One of the significant provisions of AIA known as post-grant review allows the public to challenge the validity of granted patents issued based on patent applications filed on or after March 16, 2013 within a nine-month window from patent grant. The post-grant review will allow a party (other than the patentee) to challenge the validity of a patent not only based on printed publications but also based on any statutory ground that can affect patentability, e.g., prior public use, sale or lack of enablement.

It is likely that many companies will routinely employ post-grant review to challenge issued patents of their competitors, or as a leverage to secure licenses from the patentee. Even non-profit organizations can use the post-grant review to challenge patents in certain technological fields, e.g., biotechnology, to advance their public policy agenda. In Europe, organizations such as Greenpeace already play an active role in challenging patents. Such public activism will likely fuel challenges under the U.S. law as well.

There is little doubt that a patentee will face high costs for defending a patent when a post-grant review is initiated. Conservative estimates of the cost to the patentee, including one put forth by the Patent Office, are in excess of $250,000. Though a fraction of the cost of patent litigation in federal courts, such a significant cost can nonetheless impose a great burden on patentees with limited resources.

9. Patents to be issued based on applications filed after March 16, 2013 can be more susceptible to other administrative validity challenge, as well.

Prior to AIA, third parties, as well as the patentee itself, could request that the Patent Office reexamine an issued patent in view of printed publications not adequately considered during the examination of the patent application. With some modifications, the reexamination process remains available under AIA, (ex-parte reexamination and inter partes review (IPR) are available under AIA). The expanded scope of prior art for applications filed after March 16, 2013 will, however, render these reexamination processes more potent for challenging granted patents.

10. It's always a good idea to file your patent application sooner rather than later.

But for his delay, Daniel Drawbaugh might have been known as the inventor of the telephone. Drawbaugh claimed to have made telephones eight years before Alexander Graham Bell. However, Bell filed his patent application right after he made his discovery and by the time Drawbaugh got to the Patent Office, even the “first-to-invent” rule couldn't help him because of the burden of proof. The case was ultimately decided in the U.S. Supreme Court by one vote.

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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