Advantages to Filing Patent Applications Before the America Invents Act becomes Fully Effective on March 16, 2013

February 7, 2013
Legal Updates

The America Invents Act (AIA) changes the U.S. patent system from a "first to invent" to a "first inventor to file" system, which simplifies some aspects of patent law. However, there may be some advantages for patent applicants under the old system. Since the AIA comes into full effect on March 16, 2013, there is only about a month to file a patent application to retain these advantages:

Ability to Overcome "Prior Art"

This is the major change that the AIA makes. Public information that discloses an invention before the patent application on that invention was filed is known as "prior art." Under the current system, in certain circumstances it may still be possible to obtain a patent even if there is prior art. To do that, it is necessary to show that the invention was conceived before the information was made public.

After March 16, 2013, it will no longer be possible to "swear behind," or show that an invention was conceived before the public was informed about it. There will be ways to secure patent rights if the public information was obtained from the inventor, but it is not yet understood what will be necessary or how narrow this exception is.

Less "Prior Art"

The AIA broadens the definition of prior art in subtle, but important, ways: (1) Currently, public use or sale of an invention is only prior art if it was within the United States. This will effectively be changed so public use or sale anywhere in the world is prior art. (2) Currently, U.S. Patent documents are prior art as of the date they were first filed in the U.S., not the date they are published. The AIA broadens this to the date a U.S. Patent document was first filed in the U.S. or any country.

Fewer Grounds to Challenge Patent

The AIA creates a new "post-grant" review which applies to patents that were filed on or after March 16, 2013. Any patent applications that were filed before that date are not subject to the challenge once they are granted patents.

Lower Fees

The U.S. Patent Office will be increasing their fees on March 19, 2013 (three days after the AIA goes into full effect).