The America Invents Act requires new strategies for filing and prosecuting patents.

• Author: Taylor, Arles
• Position: LAW JOURNAL 2013

U.S. patent law has undergone the most significant change since 1952 with the recent enactment of the America Invents Act. The final provisions of the act took effect March 16. Presented here are several strategies for how to deal with the new provisions.

Filing strategy considerations

The most publicized change is that the U.S. became a first-inventor-to-file jurisdiction. When two patent applications directed to the same invention are filed by different parties, the U.S. Patent and Trademark Office will award the patent to the inventor who filed first. The pressure to file applications early has increased. To meet this pressure, the filing of provisional patent applications can be a strategy to obtain early filing dates. To facilitate early filing of provisional patent applications, employee inventors could be encouraged to provide more complete invention write-ups.

Further, consider filing serial provisional patent applications to establish a series of early filing dates as the inventors make new observations about a patentable discovery. This can be particularly effective in biotechnology and life sciences, where additional observations in the laboratory can enhance the scope of the invention. To optimize this strategy, at the one-year anniversary of the earliest filed provisional application, file a nonprovisional patent application, claiming priority to all of the serially filed provisional applications.

Pending and continuation applications

Pending patent applications and applications that claim priority to patent applications--such as continuation applications--filed before March 16 are subject to the previous rules and provisions. A potential risk associated with filing patent applications after March 1 6 that claim priority to an application filed before that date is that if at any time during prosecution even one claim contains subject matter that was not originally disclosed in the priority application the new rules and provisions apply in determining the patentability of every claim.

Expansion of prior art and public disclosures

The body of prior art available to be cited against U.S.-patent applications expanded as of March 16. The term "prior art" refers to the body of literature in the field of the invention that exists before the date of invention or, under the act, before the filing of a patent application on the invention. For example, a scientific journal article that is published just one day before a patent application...