On March 16, 2013, about 18 months after the United States (US) President signed it into law, the Leahy-Smith – America Invents Act (“AIA”) (hereafter the Act) took effect. The act is supposedly tailored to bring US patent law in sync with the patent systems of the rest of the world.
There are a slew of changes that impact filing, fees, issue etc. but the key provision relates to timing of patent filing. In the US, before March 16, 2013 if someone filed a patent (let’s call her the first filer), then it was possible that someone else could come along with a set of lab notebooks or the like and realistically claim they had that idea first, and deny the first filer the right to apply that invention. From March 16, the impact of the change is that it will be a race to the patent office, and it will not matter who came up with the idea – lab notebooks and etc. notwithstanding.
The system as of March 16 is generally called as the “First to File,” as opposed to the previous “First to Invent.” However, given that the Act obviously provides for protection in the case of stolen ideas – it is termed as a “First Inventor to File.”
This is a major issue – and most patent attorneys, and agents were busy filing patent applications till the last minute before the Act took effect. Major advantages that the Act provides are faster application processing / examination at the US patent office.
A few other provisions that are interesting relate to disclosure, and third party review. The Act does provide a one year grace period – from the date of a public disclosure – but it is not clear whether the period would be applicable to other WTO countries as well. The definition of prior art (something which has been done – or known – from a time before an idea is crystallized.
The Act also provides for a new administrative board at the US Patent Office – and will have the power to invalidate patents before disputes get to court.
