The patent reform introduced by the America Invents Act (AIA) constitutes the most radical set of changes in the US patent law since probably the first US patent code. No longer is the date of invention important — the important date now is the effective filing date. This change introduces a game-changing race to the patent office where the first to file wins. The change in the US patent law also expands the references that can be used to prevent obtaining a patent, the so-called “prior art.” This expansion in the prior art and the race to the patent office would also require a change in the IP protection strategy. Although this is not a phrase that should be used in an election year, the response can be characterized as “FILE EARLY AND OFTEN.”
The expansion of the definition in the prior art can be seen by comparing section 102 of the patent code as it exists today, to that which will be in effect after March 16, 2013, when the last part of the AIA comes into effect. The expansion in the prior art can be described as having two components. First, we can no longer swear back. Swearing back was a process by which you would get rid of one reference by an affidavit that proves that you had invented before the effective date of the reference. The other characteristic of the prior art on the AIA is globalization. We all know that, according to Tom Friedman, the world is flat and now the world of a US patent code is also flat. Comparing section 102 of the code between now and after the AIA is fully implemented, the differences are:
- While presently you cannot obtain a patent if the claimed invention was known or used by others in this country, there are no territorial limitations in the AIA. You cannot obtain a patent if the invention was in public use, on sale or otherwise available to the public anywhere in the world.
- While presently those acts have to happen before the invention by the applicant, a patent in the AIA is precluded if the claimed invention was in public use, on sale or otherwise available to the public before the effective filing date.
We should also note that while it is now required that the claimed invention was known or used by others, the term “by others” is not present in the AIA.
The effective filing date under the AIA includes a filing date of any application in which the claimed invention is entitled to the benefit of priority, whether the application is provisional, non-provisional, an international patent (PCT) or a foreign application. This can be seen as an extension of protection for the applicant, but by the same token, that same extension happens in the prior art. The world is flat. The effective filing date for a claimed invention is determined claim-by-claim (same as today but not always adhered to).
A second part of section 102 of the AIA is similar to section 102 (e) of the present version. Any US patent or published US patent application which names another inventor and has an effective filing date before the effective filing date of the claimed invention, can also be used as a reference against the claimed invention. But, note that the effective filing date has been expanded to cover any provisional, non-provisional, PCT application or foreign application from which the US application derived priority.
So, we have two main drivers of the expansion of the prior art; we now rely on the effective filing date (no swearing back) and any claim of priority to application anywhere in the world, which creates that effective filing date for the prior art — the world is flat.
A grace period remains in the US code so that your own disclosures cannot be used against you. If you are planning to file internationally, the grace period has to be disregarded, but if you’re only planning to file in the US, as is the case for most small entities and single inventors, the grace period is important. The AIA provides that a disclosure made by or on behalf of the inventor one year before the effective filing date of the claimed invention is not prior art. A disclosure is not defined by the AIA; however, in the proposed guidelines, the USPTO considers a disclosure as any of the activities enumerated in 102 (a): being patented, describing a publication in public use, on sale, or otherwise available to the public. But caution, the USPTO does not make law.
In the present code there is a one-year bar against obtaining a patent if the invention was described in a printed publication or in public use and sale more than a year before the application for patent. In the in-between year, a publication is still prior art, but it is more likely you’ll be able to swear behind.
In the AIA there is no swearing behind. In the AIA the grace period is only for your own disclosure.
Considering all these changes, which basically expand the prior art and also expand protection, one suggested strategic response is FILE EARLY AND OFTEN. For example, file early provisional applications which have to be enabling and meet a written description requirement, so you want to have claims in mind. As new results are found, file subsequent provisionals so that you have an early effective filing date for the new results which add to the previous invention. You can do this with non-provisionals, but it is cheaper if you use provisionals; you can modify this approach to filing full utility applications.
Here are some suggestions for including the impact of the expanded prior art impact on the invention review process:
- Encourage early disclosure (I know this is difficult since technical people would rather do the technical work).
- Increase the frequency of disclosure review meetings.
- Consider categorizing the inventions (what I call the ABC approach to invention review). Assuming you do not have an infinite budget, you have to decide which of those disclosures to file early.
- Have good knowledge of the prior art. The expansion of the prior art, and the new post-grant review, underscore the importance of a good search.
Many of these suggestions could have been said of the present code, but they are now more important. So, although we will end up with a cleaner system, no swearing, and the world of the patent code is now flat, these changes are not as drastic as they appear and we can learn to live with them.