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America Invents Act: What you need to know about the upcoming changes to U.S. Patent Law

On March 16, U.S. Patent Law will undergo its first major change since 1952. Entrepreneurs and investors, here's how it could affect you.

Ben Franklin (above) with one of his inventions, the glass armonica. Despite his many inventions, he refused to apply for any patents, according to PBS. Photo from ExplorePAHistory.com
This is a guest post by J. Eric Sumner, an intellectual property attorney at Center City's Fox Rothschild who has worked with Fortune 500 companies and startups.

By J. Eric Sumner

On March 16, U.S. Patent Law will undergo its first major change since 1952, as part of the America Invents Act.

The two major changes involve the following:

  • Switching from a first-to-invent patent system to a first-to-file patent system, meaning that patentability will be assessed from an application’s filing date and not the invention’s conception date (though in limited instances prior inventor disclosure also may be considered),
  • and allowing post-grant procedures that provide quasi-litigation forums for a third-party to challenge the validity of an issued patent claim.

J. Eric Sumner, intellectual property attorney at Fox Rothschild.

J. Eric Sumner, intellectual property attorney at Fox Rothschild.

Companies, entrepreneurs, and investors, particularly those whose businesses or investments are tied to a patented or patentable technology, here’s what you should know about the system.

First-to-File

A patent application will fall under the first-to-file system if it has at least one claim with an effective filing date on or after March 16. Below, things to consider for patents in different stages.

  • For unfiled technologies: for any patentable technology that has not been previously disclosed in a patent application: (a) consider the patentability of the technology; and (b) if the IP filing strategy calls for patent protection, consider preparing and filing an application before March 16.
  • For existing U.S. provisional and non-provisional applications: (a) consider the breadth of the disclosure and whether it provides a complete description of all aspects of the invention; (b) consider whether changes have been made to the technology and whether those changes are covered by any existing application; and (c) consider filing such undisclosed aspects in a new application (provisional, conversion, or otherwise) before March 16.

While the consensus is that first-to-invent trumps first-to-file from an inventor’s point of view, there are instances, such as secret commercial uses, where this may not be the case. Entities also should consider these instances and consult with a patent attorney to determine what filing strategy would be best for the situation.

Post-Grant Review

March 16 will also initiate the last of a series of three new post-grant review procedures, which
are available for a third-party to challenge the validity of a U.S. patent in front of the U.S. Patent
and Trademark Office. While there are nuances distinguishing these three procedures, they are
largely viewed as being pro-challenger forums that are designed to be cost effective and quick,
particularly when compared to litigating patent validity in court.

The future impact that these proceedings will have is unknown. Operate under the assumption that these proceedings can and will be used frequently. Below are some specific steps to consider during patent prosecution.

  • Monitor the relevant prior art: Stay in tune with the relevant art (patents, published literature or otherwise) and have an understanding of what was known or disclosed at that time the patent application(s) was filed.
  • Evaluate how the prior art impacts an issued or allowed claim: Attempt to view the relevant prior art from the stand point of a competitor. Consider what invalidity arguments could be made and the strengths of those arguments in a post-grant proceeding.
  • Ensure prosecution is complete: Stringently monitor an application’s prosecution and ensure that all art material to the patentability of the invention was reviewed by the Examiner. If it was not, consider what mechanisms are available to cure this defect.
  • Performing these steps may not insulate any particular patent from being challenged, but they will serve to keep each entity well-informed of the status of its portfolio and will indicate where corrections may be needed. Begin with an end in mind, identify the business risks and pitfalls facing a given patent portfolio and use the new procedures to strengthen your patent portfolio.
Companies: Fox Rothschild
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