Update: The patent law change went into effect on March 16, 2013 has an immediate impact on anyone who is thinking about protection for any invention they have created in the past.
HR 1249, the Leahy-Smith America Invents Act (AIA), shifts the United States from a “first-to-invent” system to a “first-to-file” system.
If any of you (or anyone you know ) have been sitting on an invention for years, even decades, and have the proof via lab notebooks that you are the first to invent, you need to act now to file a patent application.
Now that the America Invents Act is in effect, it is more important than ever to get inventions in early. In the past, inventors have been able to claim a date prior to the filing date by using lab notebooks and other evidence to show that they invented the invention earlier. Now that AIA is in effect, the filing date is all that matters. This makes it vital that inventors file their patent early on, instead of sitting on it.
Provisional patent applications can be used by these inventors in order to preserve their filing date, spend the least amount of money, and file it in the least amount of time possible. Provisional patent applications can be a very useful tool, but certain precautions need to be taken.
Please see my post on provisional patent applications.
There is much at stake for inventors and prospective inventors.
Small companies and independent inventors in particular need to talk to an IP attorney to help them create a strategy to win the day in the “race to file.”
The six-month grace period ends March 16. The AIA (also called the Patent Reform Act of 2011), enacted on September 16, 2011, changes the rules. After March 15, 2013, a claimed invention is not novel if it:
was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention
was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Major points regarding the First-Inventor-to-File
- The applicant must be the true inventor or assignee
- The “effective filing date” equals the earliest priority date
- Prior art is expanded to include disclosure available to the public anywhere
- “Effectively filed” includes foreign priority dates
- The priority date will be the effective date for both novelty-defeating and obviousness.
Exceptions to prior art include a one-year grace period for inventor or joint inventor which applies to all “disclosures” which may include offers, sales and public uses.
Other areas of change in AIA
There are three other major areas of change that may affect you:
- Patent Office prosecution fees and funding
- Litigation reforms
- Patent Office proceedings
Whether you believe you have something patentable, are considering filing a patent in the future, or have protected IP in your business or your business plans, you need to evaluate your situation in light of the AIA.
Changes in policies and proceedings can mean delay or disappointment if an inventor does not understand the new landscape. Anyone who is depending on patent protection for successful execution of his/her business strategy needs to talk to an experienced, dedicated patent attorney as soon as possible.
Would You Jump Without a Parachute?
Of course you wouldn’t. So when it comes to your IP needs, consider speaking to a qualified IP legal team, especially with the upcoming changes in IP law.
Albuquerque Business Law’s IP Division emphasizes client service. Experienced patent attorneys Diane E. Albert and Kameron W. Kramer offer satisfaction guaranteed with flat fee filings and regular feedback to clients to ensure that they always know where they are in the process.
Whether you are new to the patent process or an old hand, you will appreciate the way Albert and Kramer combine IP legal expertise and technical savvy (Albert has degrees in mathematics education, materials science and metallurgical engineering, Kramer in chemical engineering) to make IP protection as efficient and stress-free as possible. And, ABL/IP is one of the few law firms in the Albuquerque area to combine expertise in IP protection and IP litigation.
Like this type of information? Albuquerque Business Law’s IP Division is here when you need us to provide IP protection and litigation expertise. For regular updates in IP law and how it affects you, subscribe to our blog by entering your email address in form below. You will never receive spam. Ever.