America Invents Act
The Leahy-Smith America Invents Act (AIA) has taken full effect on March 16, 2013.
Below are a few of the key changes that we think you should be aware of:
- A change to a “First Inventor to File” system. This will affect an inventor’s ability to “swear behind” a prior art reference. Currently, the United States uses a “First to Invent” system, which favors individual inventors who do not have the resources to file a patent as soon as the invention is completed.
- Foreign patent applications by others that are published in English (for instance when a U.S. application claims priority to the foreign application or when a PCT case designates the U.S.) will become prior art (against the client’s application) as of their foreign filing date. Previously, these foreign applications could only become prior art under 102(e) as of their U.S. filing date. Essentially this means that applications by parties not related to the client’s current project claiming priority to a foreign application can now be cited as prior art 12 months earlier. Thus, the new law expands the amount of art that can be cited against a client’s application filed under the AIA.
- 102 prior art now includes public uses, sales, and publications anywhere in the world, not just the U.S.
- The one-year grace period is much more restrictive. Inventor publications are still exempted, but it is unclear what effect third party publications that build upon the inventor’s prior publication will have on prior art.
- Further, it is unclear whether sales or public uses within the grace period are considered exempted “disclosures.” This also calls into question whether an applicant can rely on the experimental use exception to statutory bars.
- Competitors and other Third-parties can now submit prior art references into an applicant’s application file. The third-party can submit a written statement of the references relevancy as prior art.
The new law confers both benefits and disadvantages to small and mid-cap firms.
We recommend that you reevaluate your invention disclosures and trade secret protocols.
Don’t hesitate to contact Mike or Szymon at:
or via email at:
for any guidance.
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