RECENT PATENT LAW CHANGES (  AIA FACTS )

(Note: This page is not intended as a comprehensive or complete discussion of the new patent law FAQs, but instead we will review just a few of the major changes. Also please see the Disclaimer page on this website.)

What is the America Invents Act (AIA)?

On September 16, 2011, the America Invents Act was enacted. The AIA made a number of significant changes in US patent law that have been gradually implemented since 09/16/2011.

What is first-to-file ( FTF )?

Prior to March 16, 2013, US patent law could be described as a first-to-invent system. AIA has changed the US patent law system to a type of first-to-file patent law system. Under the FTF system, the inventor who files the earliest patent application for an invention will usually be entitled to any patent that issues. This will be the case even if the first inventor to file was not the first one to invent the invention. An exception to this can occur if a second inventor can prove (in a USPTO derivation proceeding) that the first to file inventor derived it from the second inventor.

How does AIA affect the definition of prior art?

Under AIA, prior art references now include any information, such as patents, patent applications, public use, printed publications, on-sale activities, etc. that were publicly available, in any country or any language, prior to the filing date of your earliest patent application. Information you (the inventor) disclosed not more than a year before the filing date of your patent application does not normally constitute prior art.

What are the significance of prior art references for an inventor?

Prior art  references related to the elements of your invention can be used by the USPTO examiner to reject the claims in your patent application, based on either lack of novelty or nonobviousness.

Under AIA, if I was the first to conceive an invention and I file a patent application, does that mean that a second inventor cannot obtain a patent on my invention?

No. A second inventor, who independently invents the same invention after you invented it, will be entitled to the patent rights if he (the second inventor) files his patent application before you file a patent application.

Does an inventor have a grace period to file a patent application after he has publicly disclosed his invention?

Under AIA, an inventor is allowed a grace period of one year before the earliest date the inventor files a patent application. The inventor may publicly disclose his invention during this grace period without losing his patenting rights. Despite the grace period, it is usually advisable that an inventor NOT publicly disclose his invention in any way, or even offer it for sale, until after the inventor has filed a provisional or non-provisional patent application.

Why may it be critical that an inventor file a patent application as soon as possible after inventing an invention?

The first inventor of an invention, who is also the first to file a patent application on that invention, could still lose his patenting rights under certain situations.

If a first inventor invents an invention, and later a second inventor independently invents the same invention, and the second inventor publicly discloses the invention before the first inventor files a patent application, the first inventor will be denied a patent on his invention due to the second inventor’s disclosure becoming prior art. In such a case, the first inventor will be denied a patent even though he was the first to invent and first to file the patent application.