October 2012 CBA REPORT
patent is granted. In addition, the extent
to which a prior public disclosure will
defeat an earlier filing by another inven-
tor is unclear. For these reasons, the far
better approach after March 15, 2013 will
be to file patent applications as soon as
possible, taking advantage of provisional
There is also considerable uncer-
tainty with respect to some aspects of the
first-to-file system. For example, under
current caselaw, the secret commercial
use of an invention by the inventor (or
their assignee) more than 12 months
prior to filing a patent application bars
Some have argued that
the AIA overturns this precedent, and
will allow the patenting of an invention
which was secretly and commercially
exploited more than 12 months prior to
the filing date.
In addition, at least one
lawsuit has been filed challenging the
constitutionality of first-to-file.
Will the AIA strengthen our patent
system and promote innovation, as sup-
porters claimed? That remains to be seen,
since much of its impact is still unclear.
There is no question that the AIA will
raise the bar for patentability in some
instances, as it unquestionably expands
the available prior art as well as third-
party challenges of pending applications
and issued patents. Also, first-to-file will
arguably bring more certainty, as there
will no longer be a need to determine a
date of invention. On the other hand,
the many uncertainties resulting from
the AIA will take years to resolve in the
courts. Nevertheless, businesses need to
take steps now to adjust to these changes,
Miller is of counsel with Porter Wright Morris &
Arthur’s Cincinnati office. He is a registered patent
attorney, and represents clients in all facets of
intellectual property law. A 1991 graduate of The
University of Toledo College of Law, in 2010 Miller
was the first ever attorney-recipient of the Ohio Patent
Award presented byThe Ohio Academy of Science and
the Intellectual Property Law Section of The Ohio State
1 Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be codified
in 35 U.S.C.).
2 As evidenced by the recent jury award of over $1
billion in damages in the Apple v. Samsung patent litiga-
tion, patents are also critical to many large companies.
Apple Inc. v. Samsung Electronics Co., Ltd., C 11-1846
3 For example, proposals to limit damage awards for
patent infringement did not survive.
4 Small entity rates are generally available to individual
inventors, non-profits and companies having no more
than 500 employees (including affiliates).
5 Recently, the Patent Office has proposed reducing the
fees for prioritized examination to $4,140 ($2,070 for
small entities, $1,035 for micro-entities). 77 Fed. Reg.
6 Almost all patent applications are published 18 months
7 The 12 month filing deadline is commonly referred
to as the “grace period.” Most other countries do not
provide a grace period, and require a patent application
to be filed before any public disclosure of the invention.
8 This quirk has led some to characterize the AIA as
establishing a system which awards patents to the “first
inventor to publish or file.”
9 A provisional patent application is not examined for
patentability.As long as a non-provisional patent ap-
plication is filed within 12 months of the provisional
filing date, the provisional application will provide an
early effective filing date. Multiple provisional applica-
tions may be filed within the 12 month period as the
invention is further developed and refined. While the
filing fee for a provisional application is low ($250), a
provisional application provides an early filing date only
to the extent that it sufficiently describes and enables
(explains how to practice) the invention ultimately
claimed in the non-provisional patent application.
10 Metallizing Engineering Co. v. Kenyon Bearing and Auto
Parts, 153 F.2d 516 (2d Cir. 1946).
11 If the AIA indeed allows the patenting of an invention
which was secretly and commercially exploited by the
applicant more than 12 months prior to the filing date,
it may provide one of the only reasons for waiting until
after March 15, 2012 to file a patent application. Thus
far, the Patent Office has not taken a position on this
question. See 77 Fed. Reg. 43,759, 43,765 fn. 29 (2012).
12 MadStad v. USPTO, 12-CV-1589 (M.D. Florida 2012).