In our last two updates, we reviewed the new definition of prior art as well as the exceptions thereto. In view of the intricacies imposed by the upcoming expansion of the definition of prior art, patent applicants should consider the following:

  • Filing patent applications on or before March 15, 2013. Applicants can beneficially use this interim time period (between now and March 15, 2013) to file applications thereby obtaining the benefits of the current first-to-invent system. This can be particularly important for inventions that have a long development cycle and may be entitled to a substantially earlier date of invention.
  • Publishing invention disclosures on or after March 16, 2013. Applicants can consider early publication of their inventions, even prior to patent application filing, in view of the AIA assuming that they do not contemplate seeking protection outside the U.S. and intend to file a patent application within one year. These same publications can render unpatentable later-filed patent applications filed by others.
  • Preserving both U.S. and international patent rights by filing at least a U.S. provisional patent application before disclosing any invention.
  • Performing an early assessment of inventions, determining whether the inventions are worthy of patent pursuit internationally, or in the U.S. only, or should be held as a trade secret, and then acting accordingly. If in the U.S. only, consider early publication.

In conclusion, the view of the AIA's new definition of prior art, patent applicants are well advised to "file early and file often," such as to avoid finding themselves precluded from patent opportunities by competitors who file or disclose first.