Early Patent Filing Encouraged by New Patent Law Taking Effect in 2013

In September 2011, the America Invents Act (AIA) was enacted providing the first major change to U.S. Patent Law in 50 years.

A Race to the Patent Office
One of the biggest changes provided by AIA is the conversion of the United States from a first-to-invent system to a first-inventor-to-file system. The new first-inventor-to-file system creates a race to the patent office and rewards the inventor/company that is able to get his or her application filed first.

Under the old patent statute, an inventor who invented first but filed a patent application second could seek to prove up that he/she invented first to win a patent priority contest against a first filer in a procedure called an interference. Under the new patent law, the U.S. will become a first-inventor-to-file country similar to many European countries.

First-Inventor-To-File System
Under the new system, as between two inventors A and B claiming the same invention, if inventor B files a patent application before inventor A on the same invention, inventor B will receive the patent—assuming it otherwise qualified for protection—even if inventor A was the first to invent.

Inventors Only
The law still requires that anyone who files a patent application actually invent the subject matter of the application. The law provides a procedure for the first-to-invent/second-to-file inventor to challenge the application of the first-to-file/second-to-invent applicant on the basis that the first-to-file applicant derived (or “stole”) the invention from the first-to-invent/second-to-file inventor.

Therefore a copier or thief should not be able to obtain a patent, if challenged. However, like with other types of legal disputes, engaging in a dispute with a copier can be time consuming and costly. Therefore avoiding such disputes by winning the race to the patent office is the safest approach.

The first-inventor-to-file provision of the America Invents Act takes effect on March 16, 2013.