May 1, 2012

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The America Invents Act

Patent Reform With Blockbuster Excitement

Steven L. Nichols

May 1, 2012

A car chase … spies stealing secrets … an ambush. This might sound like a great movie, but it can also give us insight into the latest reform to U.S. patent law.

The Chase
In all other countries around the world, two inventors who are working on the same idea at about the same time are in a race. The first one to file a patent application is awarded the patent.

In the United States, however, the patent currently goes to the person who came up with the idea first. That is about to change. On September 16, 2011, President Obama approved the Leahy-Smith America Invents Act (AIA), the most sweeping reform of U.S. patent law since 1952. The new Act gives America a first-to-file patent system.

Effective March 16, 2013, whichever of two competing patent applications is filed first can be cited against, and used to reject, any subsequently filed patent application. The first application will receive the patent, and any subsequent application will be rejected. The race is on.

This may disadvantage individual inventors and smaller companies who cannot pursue the filing of a prompt patent application on a new development. Consequently, the new law also introduces reduced fees for “micro-entities,” which are individual inventors and other small concerns that can meet certain criteria.

Other possible cost-saving strategies exist for patent applicants, as follows:

If inventors disclose their inventions publicly, they can still file a patent application on that invention within one year. The previous public disclosure cannot be used as a reason to reject the patent application. That is not true, however, for anyone other than the inventors who made the disclosure.

For example, consider two inventors who work separately to develop the same invention at about the same, Bob and Rachel. Bob is an engineer with few resources, so he makes a public disclosure of his invention. He could publish a technical paper, post the invention on a website, or present the invention at a conference or trade show.

Disclosing the invention creates a problem for anyone who files a patent application on that invention after his public disclosure. If Rachel files a patent application, Bob’s earlier public disclosure can be used to reject Rachel’s patent application. Bob, however, can still file a patent application for one year after the disclosure, and the disclosure cannot be cited against his application. Thus, Bob has changed the rules of the race to the patent office in his own favor. However, if Rachel makes her invention independent of Bob, without knowledge of Bob’s disclosure, her patent application may create a problem for Bob’s later application.

Under the AIA, provisional patent applications will be more important than ever. In addition to the public disclosure, Bob might still choose to file a prompt, provisional patent application for his invention that describes it in detail. Provisional patent applications are cheap (with a $125 filing fee for small businesses or individual inventors), and can be filed online directly with the U.S. Patent Office.

The Spy Thriller
Consider the black-clad industrial spy suspended on wires from the ceiling, poised to steal an invention. Under the AIA, if someone tries to patent an invention taken from someone else, the actual inventor can petition the Patent Office for a derivation proceeding and demonstrate the theft to the Patent Office. The patent can then be awarded to the actual inventor, and the thief can be sanctioned.

The Ambush
Now consider a stagecoach carrying gold and lumbering into an ambush.

In the past, examiners at the U.S. Patent Office did not get any help from the public. Communication about a patent application has only been with the patent applicant. Examiners have often been criticized for allowing patents that those in the field feel should not have issued.

Under the AIA, any member of the public can now submit information for a patent examiner to consider in approving or rejecting a patent application. After the patent application has been published for six months or received a first rejection, but before the patent application is allowed, any party may pay a fee and submit any patent or other publication that might impact the patentability of an identified patent application. This submission can be anonymous.

The possibility of an ambush also exists after the patent application issues. The AIA provides a post-grant review (PGR), in which a challenger can file an objection to the issuance of a patent within the first nine months. This attack can be on any grounds the Patent Office has authority to consider.

The new PGR process supplements the traditional re-examination process, where a party has always been able to request that the Patent Office reconsider patent claims because they are not new and inventive. For the first nine months after issuance, however, an issued patent can now be attacked on broader grounds than before.

Let the Action Begin
Racing, spies, ambushes: the new AIA has all the thrills of a Hollywood blockbuster. And you thought patent law was boring.

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