New Patent Strategies under the America Invents Act

April 2, 2013
Legal Updates

The America Invents Act (AIA) changed the U.S. patent system from a "first to invent" to a "first inventor to file" system, and added new ways to challenge competitors' patents and applications.  Under this new system, businesses will need to consider new strategies to maintain patent rights and to use the patent system to their advantage.

File as Early as Possible

The major change of the AIA is that a patent is awarded to the first inventor to file; that person is not necessarily the first person to invent.  As a result, to protect an invention it is important to file a patent application as soon as the invention is ready for patenting.  Efficient procedures for evaluating the commercial importance of an invention, searching for prior art, drafting an invention disclosure, and communicating with your patent attorney in a timely way is becoming very important.

One strategy to get the earliest possible filing date is to file a series of provisional patent applications as the invention evolves.  Prior to the one year anniversary of the first provisional filing, all the provisional applications will be combined and filed as a regular non-provisional patent application.

Amending pre-AIA Patent Application Claims

Different patent laws will cover pre-AIA (filed before March 16, 2013) and AIA patent applications.  The initial filing date determines under which law the patent application will be examined.  However, if a pre-AIA patent application is amended so that a patent claim now covers part of an invention that was not enabled in the pre-AIA patent filing, the application will now, irreversibly be examined under the new AIA patent laws.  This is important because the AIA does change the available prior art that may be used against a patent application.  So when filing or amending claims in an application that claims priority to a pre-AIA application, or you must be very be careful with regard to the scope of those claims.

Monitor Competitor's Patents and Applications

The AIA allows several new ways to challenge patents and applications, but there are some deadlines that will determine which challenges are available.  The first way to challenge a patent is post-grant review.  It allows a patent to be challenged on any grounds, not just based on prior art patents and printed publications.  The deadline for filing a Post-Grant Review is nine months after the date the patent was issued.  If the nine month deadline is missed, then a second new way to challenge a patent is Inter Partes Review.  The grounds for challenge are much more restricted than for Post-Grant Review; only prior art patents and printed publications can be the basis for an Inter Partes Review.  The threshold for entry is also more difficult than for Post-Grant Review. 

Patent applications may also be challenged with a Third-Party Submission.  This procedure allows a third party to submit prior art to be considered during the prosecution of an application.  The deadline calculation for filing the Third-Party Submission is complicated, but generally the submission must be made within six months after the first publication of the patent application.  Regular monitoring of a competitor's patents and applications will afford the greatest opportunity to challenge them.