Are You in the “Race to the Patent Office?”

By: Ivan Posey, Esq.

As of March 16, 2013, the Leahy-Smith America Invents Act (“AIA”) has been fully implemented, with several important changes to the U.S. patent system now in force. The most important change brought forth with the AIA is the transformation from a first-to-invent system into a first-to-file system. With this in mind, inventors must reevaluate their current patent prosecution strategies in order to ensure their continued success. What follows is a brief summary of the most important components of the AIA and their implications for inventors.

First-to-File vs. the Prior First-to-Invent System

As the name implies, patents under the new system will now be awarded to the first inventor to file, not just the first individual to invent the subject of the patent. As such, an inventor must take immediate action once it is determined that an invention is worthy of patent protection. This presents a special challenge for inventors without a dedicated group of internal patent attorneys, as their focus is necessarily more on inventing than on patent prosecution. Therefore, these inventors should be open to seeking outside assistance in order to maintain their competitive advantage in the marketplace.

One-Year Grace Period for the Inventor’s Own Disclosures

The AIA continues to allow a one-year grace period during which a patent can be filed after the inventor, or a third-party who obtained the subject matter from the inventor, discloses the invention publicly.  During this grace period, any disclosure by another inventor that is the “same” as the previous disclosure is not considered to be prior art in the prosecution of the subsequent patent application of the first inventor to publicly disclose. The existence of this grace period should not be relied upon, however, if for any reason, due to the obvious problems inherent in trying to prove that a third party discloser derived the invention from the first inventor’s public disclosure, if the third party discloser should publically disclose the invention. Further, there is nothing preventing a competing inventor from independently developing and publicly disclosing an invention with an improvement over the previously disclosed invention. Either of these scenarios would result in the second public disclosure being considered prior art against the first inventor’s patent application. Further, the grace period generally does not preserve foreign patent rights, and a public disclosure will prevent patent protection in many foreign jurisdictions. Inventors are therefore encouraged to avoid disclosure of inventions until after a patent has been filed for.

Derivation Proceedings

Because the question of who invented first is no longer relevant, interference proceedings are no longer necessary under the AIA. Inventors are now able to use derivation proceedings to challenge an earlier patent application, however, if they can show that the invention claimed in the application was derived from an invention of their own. While derivation proceedings are a great tool for protecting an inventor’s patent rights, they should not be relied upon as a substitute to timely filing. As mentioned previously, independent inventors who file first will be granted patents under the new system. Also, more pragmatically, the costs associated with an independent inventor instituting derivation proceedings can be avoided by simply filing first themselves.

There are other parts of the Act that may affect inventors or their organizations. For a more comprehensive analysis of how the AIA will affect your patent portfolio and patent prosecution strategies moving forward, contact Ivan Posey, a patent attorney with Leech Tishman.

Ivan Posey is a Partner and practices in Leech Tishman’s Intellectual Property Practice Group. He can be reached at 626.817.7500 or iposey@leechtishman.com. Recognition is extended to William P. Spero, III for his assistance and research in preparing this article. More information about Ivan can be found here.

Leech Tishman is a firm dedicated to providing full-service commercial legal services to individuals, businesses, and institutions. We combine a deep understanding of our clients and their businesses with skilled legal counsel to find solutions. We offer legal services in alternative dispute resolution, bankruptcy & creditors’ rights, construction, corporate, employment, energy, environmental, safety & toxic torts, estates & trusts, government relations, insurance coverage & corporate risk mitigation, intellectual property, litigation, real estate, and taxation. Leech Tishman has offices in Pittsburgh, PA, Chicago, IL, New York, NY, Los Angeles, CA and Wilmington, DE. For more information call 412.261.1600 or visit www.leechtishman.com.