California Bar Journal
CBJ - March 2012 #05.
200 Years of American Patent Law Tradition - Gone!
The California LawyerMarch 2012200 Years of American Patent Law Tradition - Gone!An Overview of the 2011 America Invents Actby Marin CioncaIntroduction
After several years of legislative rollercoaster in Congress, which had to find a common denominator among the fiercely defended interests of different interest groups, the Patent Reform initiated during the previous administration, for better or worse, is here.
On September 16, 2011, the America Invents Act was signed into law by the President. The America Invents Act (AIA) replaces a two-century old American patent law rule, the first-to-invent rule, with an "international" patent law rule, the first-to-file rule, which is followed by almost all foreign countries. There are obviously plenty of minutiae related to the new rule, which are mostly interesting and important to patent attorneys. However, I will address here only some of the most important changes to our patent system that I believe will benefit non-patent attorneys, such as trademark, business or in-house counsel, who may tangentially come in contact with patent issues.
With some exceptions, most provisions of the new law will become effective 1 year or 18 months from enactment. Thus, most provisions will be implemented in the fall of 2012 or in the spring of 2013. The United States Patent and Trademark Office (USPTO) is making efforts to get ready for the implementation of the new changes.
The New First-To-File Rule
Unlike in other countries, in the United States, for more than two centuries, the inventor who invented the invention first had the right to a patent even if another inventor applied for the same patent first. An interference proceeding was generally declared by the USPTO and the patent was granted to the first-to-invent inventor. Under the new law, the first-to-invent inventor will lose her rights to a patent unless she can show that the inventor who filed first actually derived the invention from her, the first-to-invent inventor. The supporters of the new law argue, and Congress agrees, "that converting the United States patent system from 'first to invent' to a system of 'first inventor to file' will improve the United States patent system and promote harmonization of the United...