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October 2012 CBA REPORT
cover article
neither process will be cheap, they are
certainly less expensive than litigation
and will be completed within 18 months.
First-to-File
Under current U.S. law, patents are
awarded to the first-to-invent. A complex
web of statutory provisions and caselaw
exists for determining the first inventor
when competing patent applications are
filed. As long as the first inventor files
a patent application within 12 months
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of any public use, commercialization or
publication of the invention, they are
entitled to a patent over later inventors.
All of this changes on March 16, 2013.
On that date, the U.S. will become the
final country to convert to a first-to-file
patent system. In fact, the most impor-
tant thing to remember about the AIA is
the Ides of March: March 15, 2013. This is
the last day for filing patent applications
under the current first-to-invent system.
Apart from some exceedingly rare situa-
tions, nothing good can come from filing
your patent application after this date.
Under the AIA, patents will be
award to the first inventor to file a pat-
ent application. Although applicants
will still have 12 months to file a patent
application following any public use,
commercialization or publication of their
invention, this grace period will only
apply to the applicant’s own pre-filing
activities. For example, the first inventor
will no longer be able to obtain a patent if
a third party publicly discloses the same
invention, anywhere in the world, even
one day before the first inventor files
their patent application. And a second
inventor (assuming the second inventor
did not derive the invention from the
first inventor) will be entitled to a patent
if they file their patent application before
the first inventor files.
Although the new first-to-file system
will partially harmonize U.S. patent law
with that of most other countries, the
AIA creates some new idiosyncrasies as
well as uncertainties. For example, the
second inventor to file a patent applica-
tion will be entitled to a patent if the
second-to-file inventor publicly disclosed
the invention before the earlier applica-
tion was filed. In most other countries,
neither inventor would be able to obtain
a patent in such a scenario.
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While it might be appealing to simply
adopt a policy of publicly disclosing
inventions before a patent application
is filed, such an approach would not be
wise. Not only will such public disclo-
sures prevent patenting in most other
countries, competitors will be free to
exploit the disclosed invention until a
Description of Change
Applicability
Effective Sept. 16, 2011:
Expansion of “prior user rights”—provides a defense to
patent infringement for certain commercial uses which
began more than one year before the patent application
was filed
Patents issuing on or after
Sept. 16, 2011
Elimination of
qui tam
false patent marking actions—only
the federal government may sue to recover statutory
penalty for false patent marking
All cases pending on, or
commenced after Sept. 16,
2011
Virtual patent marking—patent owner may now mark
patented products with the word “patent” (or “pat.”) along
with the address of an Internet website which provides
information associating the product with one or more
applicable patents
All cases pending on, or
commenced after Sept. 16,
2011
Patentee’s failure to disclose the “best mode” of practicing
the invention cannot be used to invalidate an issued patent
All proceedings commenced
on or after Sept. 16, 2011
75% fee reduction for “micro entities”—applies to certain
individual inventors, small companies and universities
Not applicable until the Patent
Office establishes new fees
around March of 2013
Limitations on joining multiple defendants in an infringement
lawsuit
Any civil action commenced
on or after Sept. 16, 2011
Effective Sept. 26, 2011:
Prioritized examination—expedited examination by
payment of additional filing fees
Any patent application filed
on or after Sept. 26, 2011
(also possible for pending
applications, but additional
fees apply)
Effective Sept. 16, 2012:
Third party prior art submissions—expands the window
of time for submitting prior art and allows submitters to
comment on the relevancy of the prior art
Any patent application
pending on Sept. 26, 2012
Patent owner may request supplemental examination of
their own patent—to consider, reconsider or correct
information relevant to an issued patent
Any issued patent
Post Grant Review—third party may challenge validity of
patent, on any grounds, within 9 months of issuance
Except for business method
patents, can only be used for
patents filed March 16, 2013
or later
Inter Partes Review—third party may challenge validity of
patent on limited grounds
Any patent, but cannot be
filed until 9 months after
patent issued
Effective March 16, 2013:
First-to-file replaces first-to-invent—a second inventor
can obtain a patent if they are the first to file a patent
application
Any patent application having
an effective filing date after
March 15, 2013
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