The America Invents Act: patent reform with blockbuster excitement.

• Author: Nichols, Steven L.
• Position: Legal Brief

A car chase ... spies stealing secrets ... an ambush. This might sound like a great movie, but it can also give us insight into the latest reform to U.S. patent law.

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The Chase

In all other countries around the world, two inventors who are working on the same idea at about the same time are in a race. The first one to file a patent application is awarded the patent.

In the United States, however, the patent currently goes to the person who came up with the idea first. That is about to change. On September 16, 2011, President Obama approved the Leahy-Smith America Invents Act (AIA), the most sweeping reform of US. patent law since 1952. The new Act gives America a iirst-to-file patent system.

Effective March 16, 2013, whichever of two competing patent applications is filed iirst can he cited against, and used to reject, any subsequently filed patent application. The first application will receive the patent, and any subsequent application will be rejected. Tlie race is on.

This may disadvantage individual inventors and smaller companies who cannot pursue the filing of a prompt patent application on a new development. Consequently, the new law also introduces reduced fees for "micro-entities," which are individual inventors and other small concerns that can meet certain criteria.

Other possible cost-saving strategies exist for patent applicants, as follows:

If inventors disclose their inventions publicly, they can still file a patent application on that invention within one year. The previous public disclosure cannot be used as a reason to reject the patent application. That is not true, however, for anyone other than the inventors who made the disclosure.

For example, consider two inventors who work separately to develop the same invention at about the same, Bob and Rachel. Bob is an engineer with few resources, so he makes a public disclosure of his invention. He could publish a technical paper, post the invention on a website, or present the invention at a conference or trade show.

Disclosing the invention creates a problem for anyone who files a patent application on that invention after his public disclosure. If Rachel files a patent application, Bob's earlier public disclosure can be used to reject Rachels patent application. Bob, however, can still file a patent application for one year after the disclosure, and the disclosure cannot be cited against his application. Thus, Bob has changed the rules of the race to...