On September 16, 2011, the Leahy-Smith America Invents Act (AIA) was signed into law. The AIA is the first comprehensive overhaul of the U.S. patent system since 1952 and changes many facets of U.S. patent law. The third phase of changes of the AIA will apply to patent applications having a priority date on or after March 16, 2013. These include an enlarged pool of applicable prior art and post-grant review proceedings.

However, one of the most important provisions is that the U.S. patent system will change from a first-to-invent system to a first-to-file system on March 16, 2013. The date of invention will no longer be relevant. The new system will award a patent to the first inventor to file a patent application at the United States Patent and Trademark Office (USPTO), thus creating a “race” to the USPTO.

In many cases, it will be beneficial to file new patent applications by March 15, 2013. Some of the benefits of filing a new patent application prior to March 16, 2013, include:

  • The claims of the patent application will be evaluated on a “first-to- invent” basis as opposed to a “first-to-file” basis. Under the current law, any publications, public uses, or sales, by anyone, that occur within one-year of the first U.S. filing date may be removed from the applicable pool of prior art if the claimed subject matter was invented prior to those publications, public uses, or sales. Under the new AIA laws, prior activities of others cannot be removed from the applicable pool of prior art.
  • A smaller applicable pool of prior art will be available. For example, under the current patent laws, public uses and sales do not act as prior art against a claimed invention unless they occur in the United States. Under the new AIA laws, public uses or sales anywhere in the world could serve as prior art. As another example, under the current patent laws, international (PCT) applications are only prior art as of their filing date if they are in the published in the English language and designate the U.S. Under the new AIA laws, PCT applications are effective as of their filing date if they designate the United States irrespective of their language of publication.
  • The patent cannot be challenged by the new post-grant review process of the AIA. The post-grant review process enables U.S. patents to be challenged within nine (9) months after the issue date and the grounds for challenging validity of the claims is not limited. Under the current law, U.S. patents can only be challenged by instituting inter partes review proceedings at least nine (9) months after the issue date and the grounds for challenging the validity of the claims is limited to novelty and obviousness.
  • Avoid an upcoming increase in many USPTO filing fees.

Although currently pending provisional and non-provisional patent applications may provide a priority benefit for a later filed non-provisional patent application, the new AIA laws are restrictive with respect to priority benefits. New AIA laws will apply to any application having any claim directed to new subject matter not disclosed in a priority application filed prior to March 16, 2013 and to any application claiming priority to an application governed by the new AIA laws.

One potential downside to filing a non-provisional patent application by March 15, 2013, is that the term of a U.S. patent may be shorter than a non-provisional patent application filed on the one-year anniversary of the provisional filing date. But the term will be shortened by no more than one year, so this must be evaluated against the various benefits of filing a patent application by March 15, 2013.