The America Invents Act--a first for America.

Author:Slocum, J. Michael
Position:Voice of Experience

The new America Invents Act (AIA) is the most wide-ranging revision of the U.S. Patent Laws in more than 50 years. Many of the provisions of the law relate to the arcana of practice before the United States Patent and Trademark Office (USPTO). Many of the other changes to the patent law will be of interest to any organization or individual dealing with patents--as patentee, licensee, or possible infringer. The law's most important effect is to change the U.S. Patent system from "first-to-invent" to "first-to-file."

The Smith-Leahy America Invents Act (H.R. 1249) was signed into law as Public Law 112-29 by President Obama on September 19, 2011. The new Law represents the single most important revision to U.S. patent law since the Patent Act of 1952.

Most importantly, the AIA moves the United States to the first-to-file system. The AIA does preserve a "grace period," ensuring that during the year prior to filing, an invention will not be rendered unpatentable based upon any of the inventor's own disclosures, or any disclosure made by any party after the inventor has disclosed his or her invention to the public.

The United States was the last holdout in using a first-to-invent system. Every other country in the world had moved to a first-to-file system decades ago. Patenting will now move from the familiar two steps (conception of the invention and reduction to practice) to one, in which the right to a patent for an invention is determined by the first person to file for a patent to protect that invention, even where another person can prove that he or she conceived of the invention and reduced it to practice before the patent holder filed.

Many experts in patent practice expect greater use of provisional patent applications. (Abramson, Sullivan, Egbert, & Chiarini, 2011). These experts also expect to see organizations specializing in early development phase research needing to dedicate more resources to patent protection and dedicate those resources earlier in the process.

The AIA also recodifies the so-called CREATE Act. That Act made changes in U.S. patent laws to promote cooperative research and development among universities, government, and the private sector by allowing the sharing of confidential information among research partners of differing entities without creating a bar to the patentability of their joint invention.

The AIA contains an interesting exception to the first-to-file rule. The Act allows an inventor to make a voluntary disclosure of an invention up to one year prior to the filing date of the patent application without losing the right to patent. This appears to allow an informal public disclosure to protect the possibility of later filing a patent application for an...

To continue reading