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January 2012 CBA REPORT
cover article
By Brett A. Schatz
he Leahy-Smith America Invents
Act (the America Invents Act)
marshals in what can conser-
vatively be described as significant
statutory changes to U.S. patent law.
Those changes relate to the manner
in which — and to whom — patents
are awarded, how patent applications
and issued patents are reviewed by the
United States Patent and Trademark
Office (PTO), and how patents can be
challenged by third parties after they
are issued. Adding to the complexity of
the America Invents Act is that the PTO
is tasked with adopting new rules and
procedures that implement the changes
it brings about, and that many of the
changes are phased in over time, while
some provisions are already in effect. In
short, the America Invents Act institutes
complex changes to U.S. patent law that
significantly affect patent rights and the
manner in which those rights are ob-
tained, defended, enforced, and litigated.
Race Begins March 16, 2013
One particularly unique aspect of
U.S. patent law is it is a “first-to-invent”
system. Generally, in a “first-to-invent”
system, the inventor who conceived of
the invention first is entitled to a patent
on the date they conceived of the inven-
tion. Subject to some pretty complex
exceptions, that would be the case even
if another files a patent application, and
actually reduces the invention to prac-
tice, before the inventor.
The America Invents Act brings the
U.S. patent system in line with other
countries’ laws by awarding a patent to
the inventor who files an application
first. Hence, this aspect of the America
Invents Act transitions the U.S. patent
system to a “first-inventor-to-file” system.
The “first-inventor-to-file” system applies
to any patent application that contains
or contained at any time a claim with an
effective filing date on or after March 16,
This transition from a “first-to-
invent” to a “first-inventor-to-file” system
is a radical one, with significant implica-
tions for both lawyers and their clients.
For example, securing the earliest pos-
sible filing date is of great importance,
such that implementing procedures
designed to minimize the time it takes
to prepare and file a patent application
after conception of an invention may
be required. For clients, this may place
a strain on inventors’ schedules. It is
also for this reason that many practitio-
ners believe that the process by which
provisional patent applications are filed
to preserve the earliest possible filing
date may be more readily utilized. In
litigation, proof of earlier conception and
reduction to practice by another is no
longer a defense to an allegation of patent
Derivation Proceedings
Under the “first-inventor-to-file” sys-
tem, only a true
of the claimed
invention may be entitled to a patent.
applicant for a patent that derived the in-
vention from the true inventor is not an
inventor. How then, can the true inventor
obtain relief from such a “deriver”?
Under the America Invents Act, a
derivation proceeding takes the place of
the previous interference proceeding to
address such a situation. In a derivation
proceeding, the applicant of a later-filed
application for a claimed invention is
authorized to file a petition with the PTO
asserting that an applicant of an earlier-
filed application derived the invention
from an inventor named in the later-filed
application. The later applicant must file
the petition within one year of the first
publication of a patent claim included
within the later-filed application that is
the same or substantially the same as a
patent claim in the earlier-filed applica-
tion. Thus, the one year time limitation
begins to run on the date of first pub-
lication of claims in the later-filed
Once a petition is filed, the director
is charged with determining whether
What’s Next in U.S. Patent Law:
Changes in the Landscape
The America Invents Act brings the U.S. patent
system in line with other countries’ laws by
awarding a patent to the inventor who files an
application first.
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