What are the most important changes to the patent system enacted by the Leahy-Smith America Invents Act (“AIA”)?

The most fundamental change is the shift to a “first-to-file” system from a “first-to-invent” system. Under the new system, the first inventor to file, rather than the first to invent, will be entitled to the patent. This shift brings the United States patent laws into greater harmony with international patent laws.

The AIA also expands the definition of prior art, while providing inventors with the benefit of a one-year grace period that prevents some of their own disclosures from acting as prior art.

Which patent applications will be subject to the AIA’s new “first-to-file” system?

All applications with an effective filing date on or after March 16, 2013 are subject to the AIA’s “first-to-file” system.

How does the AIA change the definition of prior art?

The AIA expands the definition of prior art. Under the AIA, the measuring point for all prior art is the effective filing date of an invention, not the date of invention.

The AIA also abolishes the geographic requirement that the prior use or sale of an invention must occur in the United States in order to be considered prior art.

Finally, a U.S. patent application of a third party claiming foreign priority— which has as its effective filing date the filing date of a previous foreign patent application—may now, under the AIA, constitute prior art.

How does the one-year grace period work?

Theoretically, the grace period allows an inventor to publicly disclose her invention and then seek U.S. patent protection within a year. The AIA does not define what “disclosures” are sufficient to trigger the grace period. This definition will likely be clarified through future litigation.

It is important to note that, despite the grace period, disclosures prior to filing can affect an inventor’s ability to gain patent protection both in the United States and in foreign jurisdictions. One scenario is that your public disclosure could prompt a competitor who has independently invented the same technology to file a U.S. patent application ahead of you. Because the AIA rewards the “first inventor to file,” that competitor will prevail over your patent claim. Also to bear in mind is that the AIA does not change foreign patent systems; for example, once a technology is publicly disclosed, a new patent application cannot be filed in Europe. Inventors should consult with OTL well in advance of making any potential disclosures about their inventions.

How do I know if I have made or will make a “disclosure” under the AIA?

The definition of “disclosure” remains open but you should think of it broadly as any public disclosure that tells someone else how to make and use the invention. You should consult with OTL before taking any actions that may be considered disclosures.

If someone steals my invention and then files for a patent, will they be entitled to the patent?

No, only true inventors are entitled to a patent, as has always been the case in the US. To stop an alleged intellectual property theft, you may institute a derivation civil action in district court, or a derivation proceeding at the Patent Office. To prevail in a derivation civil action or proceeding, a party alleging derivation must provide evidence of prior invention and diligent reduction to practice as well as evidence of communication to the other party. For this reason it is crucial that inventors maintain accurate lab notebooks and other invention records. We do not want to rely on the “derivation proceeding” to try to obtain patent protection.

It is important to note that the AIA’s new first-inventor-to-file system eliminates interference proceedings. This means that applicants will no longer be able to “swear behind” prior art.

Given that there will no longer be interference proceedings, and inventors will no longer be able to “swear behind” prior art, do I need to continue to maintain accurate lab notebooks and other invention records?

Yes. It is crucial that inventors continue to diligently maintain lab notebooks and other invention records under the AIA. Additionally, in light of changes enacted by the AIA, inventors should be sure to record prior use, access to invention, and any disclosures to third parties.

I am still confused; under the new AIA, when should I tell OTL about my new invention?

We encourage Stanford inventors to file an online invention disclosure to OTL, or at least ask OTL staff, several weeks before they publicly disclose a new invention. The post-AIA rules are complex, but there are a number of strategies to manage various challenges. The earlier you start talking to OTL, the more time and better options will be available to plan a good strategy for your invention.