The first-inventor-to-file provisions of the America Invents Act (AIA) took effect on March 16, 2013. While the effective date provisions for the first-inventor-to-file provisions are complicated, the new laws will apply to all U.S. applications with an earliest effective filing date on or after March 16, 2013, and also to U.S. applications that claim subject matter with an earliest effective filing date on or after March 16, 2013, even if such applications have an earlier priority date. Other changes to USPTO practice apply to all applications filed from now forward, even those that fall under substantive first-to-invent laws.
New Requirement For “Transition” Applications
Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the new U.S. patent laws. While there are a few situations where delaying filing could be advantageous, stakeholders do not need to wait to file their patent applications until March 16, 2013 in order to maximize their prior art effect.
35 USC § 102(e) Versus 35 USC § 102(a)(2)
The prior art effect of a published U.S. or PCT appl [...]
In two months, the U.S. patent system will begin its transition from the current “first to invent” system to a new “first-inventor-to-file” system. Inventors and applicants should be considering whether patent applications that may be ready for filing should be filed before or after the March 16, 2013 effective date of the U.S. first-to-file laws. This article provides a non-comprehensive, big picture review of the changes that take effect on March 16, 2013, and discusses other changes to the America Invents Act recently passed by Congress.
Which patent applications will be governed by the first-to-file laws?
On September 16, 2012, inter partes review proceedings became available against U.S. patents and post-grant review proceedings became available against certain U.S. business method patents. In two weeks, seventeen petitions for inter partes review have been filed and eight petitions for post-grant review have been filed. This article takes a brief look at these new proceedings.
Inter Partes Review
While similar in principle to inter partes reexamination (which is no longer available), inter partes review is different in many significant respects. Like inter partes reexamination, inter partes review offers a way to challenge a granted U.S. patent based on print publications in a [...]
The “first-to-file” provisions of the United States “America Invents Act (AIA)” take effect on March 16, 2013. Because of other changes to the U.S. patent system, this date will be just as important to patent applications being filed around the world as it will be to those being filed in the United States. Here, I highlight several reasons why global patent applicants—and their patent counsel—should be aware of the significance of March 15, 2013—the Ides of March.
A Global View Of “Effective Filing Date”
The AIA amends 35 USC § 100 to add a new definition of “effective filing date.” Although the statutory language is complicated, it embodies the familiar concept of [...]