Vedder Thinking | Articles Preparing for Full Implementation of the America Invents Act
On March 16, 2013, the final provisions of the America Invents Act (AIA) go into effect. U.S. patent applications filed on or after March 16, 2013 that do not assert any priority to an earlier application will fall under this new law. The final AIA provisions implement such significant changes to U.S. patent law that we suggest marking March 15, 2013 as the day by which to file patent applications intended to be filed in 2013.
America Goes from a First-to-Invent System to a
Under the U.S. Patent Act of 1952, and U.S. patent law from the inception of this country, the United States was a first-to-invent country, i.e., the first individual or individuals to invent are awarded the patent. Thus, individuals who are first to invent and second to file may be awarded the patent under the current law. However, under the AIA, the first inventor to file a patent application in the United States will be awarded the patent, a drastic change from the first-to-invent system that has been the law in the United States for over 200 years.
Moreover, the universe of prior art available against patents and patent applications increases dramatically under the AIA. Any information publicly available before the filing date will be available as prior art against the patent application unless it was directly or indirectly the inventor's publication within one year of the U.S. filing date.
However, an inventor's publication within one year of his or her U.S. filing date will provide hardly any grace period. Under the USPTO's proposed rules to implement the AIA, most disclosures by third parties will continue to be treated as prior art even though a third-party disclosure is preceded by an inventor's own public disclosure. According to the USPTO’s proposed rules, the AIA grace period may be relied upon only when the subject matter in the third-party disclosure is substantially identical to the subject matter previously disclosed by the inventor. Even if the only differences between the inventor's disclosure and the third-party disclosure "are mere insubstantial changes, or only trivial or obvious variations," the AIA grace period does not apply. Thus, there is essentially no one-year grace period as to third-party prior art publications.
The AIA Eliminates the Hilmer Doctrine
Known as the Hilmer doctrine, under current U.S. patent law, only published U.S. applications (including international applications designating the United States and published in English) are available for citation as prior art as of their filing dates for purposes of novelty and nonobviousness. Under the AIA, published patent applications from anywhere in the world (and in any language) will be available as of their filing dates as prior art against U.S. patent applications filed on or after March 16, 2013.
Under the USPTO's proposed rules to implement the AIA, U.S. patent applications filed on or after March 16, 2013 that assert the benefit of earlier pre-AIA U.S. (including international) applications will be subject to additional requirements concerning the subject matter and claims of applications filed on or after March 16, 2013 vis-à-vis pre-AIA U.S. applications.
Amendments in U.S. patent applications filed on or after March 16, 2013 asserting the benefit of earlier pre-AIA U.S. applications can change the applicable law and increase the universe of prior art available against the applications. A U.S. patent application filed on or after March 16, 2013 asserting the benefit of an earlier pre-AIA U.S. application will have the benefit of the current U.S. law only if all claims are entitled to the benefit of that pre-AIA U.S. application during the entire course of prosecution. Thus, if such a patent application is amended to claim subject matter only entitled to a date on or after March 16, 2013, the patent application will be deemed to fall under the new law. That can cause all claims—including the claims entitled to the benefit of the pre-AIA U.S. application—to be unpatentable in view of prior art that would not have been available under the U.S. Patent Act of 1952.
If you are considering filing for patent protection in 2013, we highly recommend filing applications before March 16, 2013. These applications should be as detailed as possible so as to preserve pre-AIA rights in as much subject matter as possible. For more information, please contact a member of the Vedder Price Intellectual Property group.