2013 Issue

84 T he America Invents Act (AIA) is a new piece of U.S. patent legis- lation enacted on September 16, 2011. Some provisions within the AIA have already been implemented, and more provisions will come into play on March 16, 2013. This article is writ- ten to assist in understanding the AIA, and how its provisions will affect your view of how you protect your intellec- tual property, and the technologies that come out of your various companies, organizations, and universities to which you are affiliate. One of the most significant changes in U.S. patent lawdeals with a change froma “first- to-invent” to a “first-to-file” patent system. The U.S. has, since the ratification of the U.S. Constitution, been a first-to-invent patent regime in which the first individual to conceive and reduce to practice a new and useful process, machine, manufacture, and compositions of matter, or any new or useful improvement thereof an exclusive right therein. Upon implementation of new provisions within the AIA on March 16, 2013, the U.S. will move to a first-to-file system wherein the first inventor to file a patent application for a particular inven- tion with the U.S. Patent and Trademark Office (USPTO) will be deemed to be the inventor in situations where a subsequent and competing party seeks patent rights in the same invention. Therefore, it becomes evenmore important to file patent applications as quickly and as often as possible to ensure prior rights over other competing parties or individu- als. The change to U.S. patent law through the AIA will also somewhat increase the pool of prior art that can be used against a patent application. Prior art is any in- formation available to the world prior to the filing of a patent application, and, as can be appreciated, may be used to reject the subject matter claimed in the patent application as being either anticipated by and/or obvious in light of this prior art. For example, previous patent applications from outside the U.S. will be effective prior art against your patent application as of the date those prior applications were filed in the home country. Before March 16, 2013, only U.S. patent applications have been applied as prior art as of their filing date. A USPTO patent examiner adverse to an applicant’s interests in obtaining a patent can now cite to foreign patents, in English or not, to reject your patent application. With this change in patent law, asolute novelty is also an important issue to ad- dress. Most other countries in the world utilize a first-to-file patent regime, and, for this reason, require absolute novelty. Under absolute novelty requirements, any act that makes an invention available to the public anywhere in the world before the filing date or priority date of the patent applica- tion has the effect of barring the invention frombeing patented. Therefore, as before, the very best practice will continue to be always filing a patent application, utility or provisional, before there is any public disclosure of the invention. Often, engineers’ work is peer reviewed and interest in publishing as soon as possible adds to the marketability of the engineers’ intellectual property and/or his company’s economic growth. However, despite this temptation to disclose your invention, patent rights may be irrevoca- bly lost if there is a public or unprotected disclosure of the invention prior to the filing of a patent application. It will also remain important to keep detailed records on the development of an invention and the circumstances of any disclosure of that invention outside your organization. Other provisions of the AIA that have al- ready been implemented and provisions that will be implemented on March 16, 2013 deal with the prosecution of patent applications within theUSPTO. Specifically, these additional provisions deal with third party prior art submissions, and changes in ex parte and inter parte re-examination procedures. We would happy to discuss these additional provisions with you should have any questions. However, we have described those provisions that you may find most helpful in understanding before you seek patent rights. As always, should you have any questions regarding these changes in U.S. patent law, please do not hesitate to contact one of our intellectual property attorneys here at Van Cott. Changes in Patent Law Engineers Must Know Engineers are habitual inventors through their development of new and useful technologies and the goods and services that evolve from these technologies. Therefore, it goes without saying that any changes in United States patent law directly affect an engineer’s ability to succeed in their various engineering disciplines.