2012 Issue

72 A MIND-BLOWING CAR CHASE … a secret spy mission to steal secrets … an ambush in which the victim rides unwittingly into a trap and has to shoot it out to survive. These might sound like ideas for a great movie script, but they are also metaphors for the latest reform to U.S. patent law. The Great Race Nothing thrills quite like a good car chase with a screaming engine, squealing tires, and a blur of scenery. The better (or luckier) driver, the one who will win the day, is the one who can get more speed from a car around the inevitable obstacles. It’s a race, with victory to the swiftest. This particular type of excitement has al- ways been missing from the lives of inven- tors who seek to protect their inventions at the U.S. Patent Office. Excitement and patent law are not often mentioned in the same discussion, but there are changes on the horizon. In all other countries around the world, when two inventors are working on the same ideas at about the same time, they are in a race. The first one to file a patent application on the invention will be the one to be awarded the patent. In the U.S., however, patent law makes it possible to avoid that race. The patent cur- rently goes to the personwho actually came upwith the invention first, regardless of who may have filed the first patent application. This is now set to change. On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (“AIA”). This Act is the most sweeping reform of U.S. patent law since 1952. Among the many changes to U.S. patent law made by the AIA, competing inventors will now have a race to the Patent Office, winner take all. Under the new law, the U.S. joins the rest of the world with a first-to-file patent system. This means that between two competing inventors, the first one to file a patent application will get the patent. This will be true even if the inventor who files the first patent application actually came up with the invention second, but it only ap- plies when two inventors both legitimately and independently come up with the same invention at around the same time. The Spy Thriller Having started with a car chase, we now encounter the black-clad industrial spy descending spread-eagle on wires from a skylight in the ceiling to steal the latest, still- secret invention of his victim. If someone steals an idea from its inventor and files the first patent application on that inven- tion, the inventor can petition the Patent Office to institute a derivation proceeding. In a derivation proceeding, the inventor will have a chance to demonstrate to the Patent Office that the thief took the idea from the inventor. Where this is the case, the patent will be awarded to the inventor and the thief will be appropriately sanctioned. The old first-to-invent rules apply until these changes go into effect March 16, 2013, which is 18 months from the signing of the new law. There will obviously be new pres- sure after that to prepare and file patent applications more quickly. Currently, U.S. All the Excitement of a Blockbuster The America Invents Act By Steven L. Nichols