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First-to-File Provisions of the America Invents Act to Take Effect on March 16, 2013

March 15, 2013

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (the “AIA”). As the first major overhaul of the U.S. patent system since 1952, the AIA significantly changes how patents are processed and reviewed. Adoption of the AIA transitions the U.S. patent system from a first-to-invent system to a first-inventor-to-file system. This change brings the U.S. patent system into line with the first-inventor-to-file systems of most other countries.

On March 16, 2013, the final round of changes to the prior law take effect. The first-inventor-to-file provisions of the AIA will apply to any application that ever contains a claim having an effective filing date on or after March 16, 2013. The pre-AIA patent laws will be applied to applications filed before March 16, 2013 and to continuations and divisionals of such applications. The changes to the prior law that take effect on March 16, 2013 are summarized below.

Changes to the Definitions of Prior Art

Under the AIA, an invention claimed in a patent application is not entitled to a patent if it was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date of the application. Public use and on-sale activities are no longer required to take place in the U.S., as in the pre-AIA law. Exceptions are provided for a disclosure made one year or less before filing if the disclosure is made by the inventor or by another who obtained the subject matter from the inventor, or if the subject matter had previously been disclosed by the inventor. As such, the AIA effectively preserves the pre-AIA one-year grace period for certain types of disclosures.

Under the pre-AIA law, a U.S. patent or published U.S. patent application that was issued or published after the filing date of a claimed invention is considered prior art as of the earliest filing date in the U.S. or in an international application designating the U.S. Under the AIA, a U.S. patent or published U.S. patent application is considered prior art as of the filing date of the earliest application to which it claims priority, including foreign-filed applications.

Under pre-AIA law, certain commonly owned patents or published patent applications could be disqualified as prior art references for obviousness rejections. Under the AIA, such commonly owned patents and published applications can be disqualified as prior art references for novelty rejections as well as obviousness rejections.

“Transition” Applications

“Transition” applications are patent applications filed on or after March 16, 2013 that claim priority to an earlier application filed prior to March 16, 2013. If a transition application contains a claim that has an effective filing date on or after March 16, 2013, a statement to that effect must be provided to the Patent Office, in which case the entire application will be subject to the post-AIA provisions. The applicant is not required to provide such a statement if the applicant reasonably believes that the transition application does not contain a claim that has an effective filing date on or after March 16, 2013, in which case the application will be subject to the pre-AIA provisions.

Derivation Proceedings

Interference proceedings have been replaced with derivation proceedings for patent applications having effective filing dates on or after March 16, 2013. A derivation proceeding is a trial proceeding conducted at the Patent Trial and Appeal Board to determine whether an inventor named in an earlier application derived the claimed invention from an inventor named in a later application. A petition to institute a derivation proceeding must be filed within one year of the first publication of the claims at issue in the later application.

Civil Action for Derived Patent

The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in the other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief. Such a civil action must be filed within one year of the date of issuance of the first patent containing a claim to the allegedly derived invention.

If you have any questions about the AIA or how it may impact your business, please contact:

Jeffrey M. Weinick, Co-Chair, Intellectual Property Group
(973) 530-2028 | jweinick@wolffsamson.com
Steven M. DiPasquo, Counsel, Intellectual Property Group
(973) 530-2076 | sdipasquo@wolffsamson.com