A sweeping set of changes is coming to the American patent law system in ten days. The America Invents Act, passed on September 16, 2011, brings significant changes to patent filing, patent disputes, and the definition of prior art.
Have you prepared your company? Here are three things you should know:
1. Race to File
Perhaps the most talked about change is the "race to file" system that will bring the United States into line with Europe and Japan. Instead of our prior "first to invent" system, the first person to file their patent now wins.
Theoretically, this should lead to less litigation, though there are a number of exceptions and a change to the definition of "state of the art" that should more than make up for any time saved.
2. State of the Art
The importance of prior art cannot be overstated. If prior art describes a patent before it is filed, this can provide the basis for invalidating a patent that has already been awarded.
The status quo defined prior art generally as material within the United States in certain types of publications within a limited time frame. Now, the definition has expanded to global sources and more types of publications with no time limit. This means pre-filing searches must be more exhaustive and more far-reaching. It also means that if one decides to file and begin production and of a product abroad before filing in the U.S., a patent might not be awarded.
Inventors need to keep two things in mind: file early, often and quickly (remember, "first to file") and silence is golden. Which leads us to ...
Don't tweet about it. Don't blog about it. Don't talk about it. The first rule of protecting a patent pre-filing is to not talk about a patent pre-filing. Though you should now be running to file a patent at full speed, you can't file before you are ready. Something as simple as a blog post or a leaked document could lead to either your invention becoming "prior art" or a competitor running to the USPTO before you get there.
That's not all of the AIA's changes. In the coming days, we'll also look at the new fast-track system and how that can help small businesses, independent inventors, and large corporations alike.
- Leahy-Smith America Invents Act Implementation (USPTO.gov)
- The America Invents Act Is a Game Changer for Patent Seekers (FindLaw's KnowledgeBase)
- Morgan: Ambiguities in Defining Prior Art under the Leahy-Smith America Invents Act (Patently O)