AIA Update: Preparing for the Transition to First-Inventor-to-File

John N. Anastasi Nicole A. Palmer

On March 16, 2013 select provisions of the America Invents Act (“AIA”) go into effect, which transition the United States to a first-inventor-to-file patent system. A prompt and strategic review of patent portfolios and invention disclosures is recommended to determine whether any applications should be filed in advance of that effective date. Applicability: Applications in which all claims are entitled to a priority date earlier than March 16, 2013 will continue to be examined under the pre-AIA first-to-invent system. However, if a claim not entitled to that priority date is ever presented during prosecution, the application and its progeny will irreversibly be examined under the post-AIA standards.

Patent applications remaining subject to the pre-AIA system may potentially have several advantages. The applicant may still be able to “swear behind” certain classes of prior art and rely on an earlier invention date to prevail in any priority contest with an interfering patent or application. A resulting patent will also not be subject to the new post-grant review proceedings through which validity can be broadly challenged within nine months of issuance.

Furthermore, some additional types of disclosures and activities will qualify as prior art under the new system. Specifically, U.S. patents and published applications will now be considered prior art as of their earliest effective U.S. or international filing date. The requirement that a prior public use or sale be ‘‘in this country’’ to constitute prior art activity will be eliminated. An applicant’s grace period for filing an application may also be limited.

On the other hand, some disclosures and activities will no longer be considered as prior art. The new statute excludes patents and patent application publications that were commonly owned or subject to a joint research agreement at the time of filing as prior art for purposes of evaluating both novelty and non-obviousness. The new statute may also remove non-public sales or offers for sale as prior art.

Framework: Pending applications that will not be updated with new subject matter do not need to be converted or re-filed prior to March 16, 2013 in order to remain under the pre-AIA system.

For new patent application filings or for patent applications that are to be updated with new subject matter, applications must be filed prior to March 16, 2013 to remain under the pre-AIA system.

New subject matter ready for filing on or after March 16, 2013 can be handled in various ways. The primary issue will be the desired degree of segregation between lineages having claims entitled to different priority dates to control the applicable rules.

Provisional patent applications are one mechanism for securing early filing dates on new disclosures but their value is limited to the extent that they are supportive of claims presented in subsequent patent filings.

Opportunity: With a handful of exceptions, the new system is generally structured to award patents to applicants that file first. Applicants will no longer be able to rely on the date of invention to defeat prior art, and the universe of what constitutes prior art will be significantly expanded. It may, therefore, be prudent to proactively file patent applications before March 16, 2013 to secure greater flexibility for future portfolio development and to mitigate against uncertain risk.

Please contact us if you would like to discuss specific filing strategies in greater detail upon review of your pending patent applications and invention disclosures.