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March 6, 2013

Filing Strategy in view of Imminent America Invents Act

 

The America Invents Act (AIA) is the most important piece of US legislation regarding patents in 30 years. It introduces several changes to U.S. patent law.

Some provisions are already in force but the following key provisions will come into force on March 16, 2013.

The End of First-to-Invent

The AIA moves the U.S. from a First-to-Invent system to a First-Inventor-to-File system to conform to practice in the rest of world.  This and other provisions of the AIA that will be effective on March 16, 2013 may result in a patent application filed on or after this date being more vulnerable to attack than if it were filed before this date.

An Expanded Definition of Prior Art

The AIA expands the universe of references or disclosures that can be asserted as “prior art” against a patent application.

In one notable change, the date of conception of the claimed invention will no longer be a factor in excluding a reference from being asserted as “prior art.”  Thus, there may be additional publications or disclosures that qualify as “prior art” under the new law that would not qualify under the old law. 

Since more art is citable as prior art, the result may be that this additional “prior art” generates additional rejections that need to be overcome in order to obtain a patent, potentially additional Office Actions from the Patent Office, and potential additional invalidity challenges that need to be refuted in order to uphold the validity of the resultant issued patent.

Effect of these Changes

These changes impact the relevance of first filing a provisional application in the USA after March 16, 2013.

The First-to-Invent law will still apply to any patent application claiming the benefit of priority of an application filed prior to March 16, 2013 provided that no claims are presented that are not entitled to the benefit of priority.  A continuation or divisional application of an application filed prior to March 16, 2013 would therefore generally be subject to the First-to-Invent law.  However, a patent application filed on or after March 16, 2013 that includes one or more claims that are not fully supported by subject matter in a priority application filed prior to March 16, 2013 will be subject to the new expanded definition of “prior art.” 

In view of these and other potential changes, in some circumstances it may be advantageous to file applications before March 16, 2013. 

Please contact us to discuss a filing strategy which takes into account the changes in US patent practice

Disclaimer: The above statement is not legal advice nor does Zacco offer professional legal advice in the USA.

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