Understand American Invents Act (AIA)

The American Invents Act has dramatically changed how the patent system operates.  Here’s a brief overview of some of the changes it entails and what it means for you.

 

A. What does it say?

 

  • 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

 

B. How will AIA change the patent application process?

 

  1. first-to-file system

AIA favors an inventor who is first to disclose versus an inventor who is first to file.  Under the first-to-file system, the first applicant to file is entitled to a patent for the invention unless the invention was derived from other people.  Rights to a patent are determined by inventors who filed first, not who first conceived of the invention. To preserve and safeguard your patent rights, you should, thus, consider filing a high quality provisional patent application as soon as you can.

  1. best mode disclosure

Under AIA, failure to disclose the best mode of practicing the invention will not invalidate a patent.  If you are only interested in U.S. patent rights, then you should disclose the invention as soon as possible to make the disclosure prior art to all potential filers. Remember with this, you still have the option of filing patent applications within the one-year grace period.

However, in certain international countries, such disclosure can act as prior art.  This may bar your subsequent patent application and destroys your patent rights.  Thus, if you want international protection, the best way to gain that is to file the disclosure as a provisional application or a non-provisional application if you’ve already completed your claims.  After filing that, then you can make the disclosure.  Next, within one year, you can file your international applications.

If you’re thinking about using non-disclosure and confidentiality agreements to show derivation by the recipient of the information, note that it is useless against third parties. Another downside is that the derivation process can be expensive. Hence, the cheapest alternative is to file provisional or utility patent applications prior to discussing the invention with anyone.

Some people assume that with an early disclosure approach, it takes significant time to prepare a patent application. However, with ProvisionalBuilder™, you can prepare high quality applications quickly and easily.  And that allows a third approach—file a provisional patent application and, at the same time or slightly thereafter, publicly disclose the invention. With this approach, you get the best of both worlds; you can prepare a high-quality, provisional patent application inexpensively that’s ready for conversion into a utility patent, and you can bar others from patenting the same invention.

C. How does AIA change when I apply for a patent? 

Under prior law, use or sale outside of the United States did not necessarily invalidate a patent. However, under AIA, if the invention is otherwise made available to the public or on sale before the effective filing date of a patent application anywhere in the world that can be used by the USPTO to reject an application. However, such disclosure isn’t applicable if it was made less than one year before filing the patent application, and the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor.

Thus, if a second patent application filer publicly disclosed the subject matter before the first inventor filed a patent application, then the second filer can use the earlier public disclosure to overcome a USPTO rejection.  He/she can use his/her public disclosure as prior art against the first inventor’s patent application.

AIA promotes pre-filing disclosure because the grace period is only available for those who publicly disclose the invention before filing. When an inventor makes the first public disclosure of an invention, public disclosures and patent applications filed by others for the same invention are not considered prior art for one year after that public disclosure. Therefore, by making the first public disclosure of the invention, the first-to-disclose inventor gets:

  • a one year grace period in which you can file your application without the USPTO using your own public disclosure against you, and 
  • the ability to block the benefits of others who are the first-to-file because your earlier public disclosure bars later application even if others were the first-to-file.

D. Is AIA good for bad for me?

Initial findings about AIA’s effect on individual inventors aren’t so great.  David Abrams and Polk Wagner, both law professors at the University of Pennsylvania, researched whether the change from a first-to-invent to a first-to-file regime is likely to disadvantage individual inventors in their paper “Priority Rules: An Empirical Exploration of First- to-Invent Versus First-to-File.” They found a significant drop in the number of patents granted to small inventors in Canada coincided with the implementation of first-to-file. The concern is that well financed and IP savvy corporations will have an easier time than an individual when quickly drafting and filing a patent application.