OFF TO THE RACES – THE RACE TO THE PATENT OFFICE, THAT IS.
This seemed like an appropriate topic to kick off Derby Week in advance of this Saturday’s big event!
On your mark, get set, go…it’s a “race to the patent office.” The American Invents Act (AIA), signed in September of 2011, historically changed the system for filing U.S. patents. On March 16, 2013, the U.S. system changed from a “First-to-Invent” system to a “First-Inventor-to-File” system. The change in law was an effort by Congress to harmonize the United States system with the rest of the countries of the world, which have similar “first-to-file” patent laws. All U.S. patent applications containing one or more claims filed on or after March 16, 2013 will be effected.
Under the new law, inventors may be penalized for waiting to long to file applications because they can no longer rely on antedating prior art references with an earlier filing date. In addition, Interference proceedings, which occurred when two inventors claimed ownership of this same idea, are now eliminated and replaced with derivation proceedings.
Patent applications are now subject to a much wider scope of prior art. For example, “public use” or “on sale” activities were previously only prior art when they occurred inside of the U.S. Now under the AIA, the geographic limitations have been removed. Thus, these activities occurring anywhere in the world may constitute prior art.
Despite this broadening of available prior art, the AIA does call for some exceptions. Notably, a one-year grace period for filing a patent application after a public disclosure still exists; as long as the public disclosure was made by the inventor or someone who obtained the disclosed subject matter (directly or indirectly) from the inventor.
In the lead, are inventors and entities that proactively take steps to file applications promptly.