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Phase 3 of the America Invents Act: New Patent Laws Take Effect on March 16, 2013

On September 16, 2011, the Leahy-Smith America Invents Act (AIA) was signed into law. The AIA is the first comprehensive overhaul of the U.S. patent system since 1952 and changes many facets of U.S. patent law. The third phase of changes of the AIA will apply to patent applications having a priority date on or after March 16, 2013. These include an enlarged pool of applicable prior art and post-grant review proceedings.

However, one of the most important provisions is that the U.S. patent system will change from a first-to-invent system to a first-to-file system on March 16, 2013. The date of invention will no longer be relevant. The new system will award a patent to the first inventor to file a patent application at the United States Patent and Trademark Office (USPTO), thus creating a “race” to the USPTO.

The U.S. patent system will change from a first-to-invent system to a first-to-file system on March 16, 2013. The date of invention will no longer be relevant. The new system will award a patent to the first inventor to file a patent application at the USPTO.

In many cases, it will be beneficial to file new patent applications by March 15, 2013. Some of the benefits of filing a new patent application prior to March 16, 2013, include:

  • The claims of the patent application will be evaluated on a “first-to-invent” basis as opposed to a “first-to-file” basis. Under the current law, any publications, public uses, or sales, by anyone, that occur within one-year of the first U.S. filing date may be removed from the applicable pool of prior art if the claimed subject matter was invented prior to those publications, public uses, or sales. Under the new AIA laws, prior activities of others cannot be removed from the applicable pool of prior art.
  • A smaller applicable pool of prior art will be available. For example, under the current patent laws, public uses and sales do not act as prior art against a claimed invention unless they occur in the United States. Under the new AIA laws, public uses or sales anywhere in the world could serve as prior art. As another example, under the current patent laws, international (PCT) applications are only prior art as of their filing date if they are in the published in the English language and designate the U.S. Under the new AIA laws, PCT applications are effective as of their filing date if they  designate the United States irrespective of their language of publication.
  • The patent cannot be challenged by the new post-grant review process of the AIA. The post-grant review process enables U.S. patents to be challenged within nine (9) months after the issue date and the grounds for challenging validity of the claims is not limited. Under the current law, U.S. patents can only be challenged by instituting inter partes review proceedings at least nine (9) months after the issue date and the grounds for challenging the validity of the claims is limited to novelty and obviousness.
  • Avoid an upcoming increase in many USPTO filing fees.

Although currently pending provisional and non-provisional patent applications may provide a priority benefit for a later filed non-provisional patent application, the new AIA laws are restrictive with respect to priority benefits. New AIA laws will apply to any application having any claim directed to new subject matter not disclosed in a priority application filed prior to March 16, 2013 and to any application claiming priority to an application governed by the new AIA laws.

One potential downside to filing a non-provisional patent application by March 15, 2013, is that the term of a U.S. patent may be shorter than a non-provisional patent application filed on the one-year anniversary of the provisional filing date. But the term will be shortened by no more than one year, so this must be evaluated against the various benefits of filing a patent application by March 15, 2013.

©2022 Greenberg Traurig, LLP. All rights reserved. National Law Review, Volume III, Number 33
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About this Author

Joseph Agostino, Greenberg Traurig Law Firm, New Jersey, Intellectual Property Law Attorney
Shareholder

Joseph Agostino concentrates his practice in intellectual property law. He has experience in preparing and prosecuting patent applications in the mechanical arts, trademark applications and copyright applications. He has drafted various agreements relating to the transfer and licensing of intellectual property including patents, trademarks, and copyrights. Joseph has experience in handling various intellectual property disputes, including trademark opposition proceedings, patent litigation and domain name disputes. He also has experience in drafting and negotiating various business...

973-443-3572
Heath Briggs, Greenberg Traurig Law Firm, Denver, Patent Law Attorney
Shareholder

Heath J. Briggs is a chemical engineer, a registered patent attorney, and has more than 13 years of patent prosecution experience. Heath has significant patent prosecution experience in the chemical area, especially in the areas of material science (e.g., metallurgy) and organic chemistry, and Heath represents several Fortune 500 companies in this area, managing their worldwide patent portfolios. Heath also has significant experience in the software and internet fields. Heath has obtained dozens of U.S. patents for his clients, and has worked with foreign...

303-685-7418
Barry Schindler, Greenberg Traurig Law Firm, New Jersey, New York, Intellectual Property Litigation Attorney
Shareholder

Barry J. Schindler is the Co-Chair of Greenberg Traurig's Global Patent Prosecution Group -- a group of approximately 4,000 domestic and 4,100 foreign applications pending and over 100 attorneys, who are registered with the USPTO. Barry has more than twenty-five years of legal experience in all aspects of pharmaceutical and chemical patent prosecution -- representing numerous major pharmaceutical and chemical companies regarding patents relating to small molecules and synthetic compounds.

Barry has helped companies of all sizes build and manage...

973-360-7944
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