As previously reported by this blog, certain provisions of the America Invents Act (AIA) have already come into effect. The most significant change – from a “first to invent” standard to a (modified) “first to file” rule, will become effective March 16, 2013.
The change was controversial, with some contending that it would favor big companies at the expense of small start-ups and individual inventors. However, David Kappos, director of the US Patent and Trademark Office (USPTO), testified that of three million patent applications filed in the past seven years, only 25 patents were granted to small entities that were the first to invent but the second to file.
The “first-to-file” system will eliminate lengthy and expensive patent interference proceedings to determine which claimant was actually the first to invent, and will reduce uncertainty as to who the rightful owner of a patent is.
Now is a good time for technology companies to consult with their patent attorneys about whether the old or new regime is more favorable to their particular circumstances, and to plan accordingly to avoid a last-minute rush (and the risk of a missed deadline) as March approaches.
Every other industrialized country in the world uses a pure “first-to-file” system. The US is adopting a modified version of this, so the new regime is more properly called a “first-to-publish-or-file” system.
A “pure” first-to-file system can use the inventor’s own prior art to preclude issuance of a patent.
The new US system under the AIA, in contrast, adopts a one-year grace period during which inventors can publish their inventions without fear of these disclosures being used against them as prior art. This grace period is intended to encourage early disclosure of new inventions.
However, since foreign patent regimes do not offer this same grace period, a disclosure may grant priority for an invention in the US, but bar patentability of the invention in foreign jurisdictions.
Thus, a patent strategy must take into account the value of patent rights in both the US and foreign jurisdictions, and the advantages and disadvantages of disclosures in advance of the patent filing dates.