October 10th, 2012
The Leahy-Smith America Invents Act (AIA) was enacted into law on September 16, 2011. The act modernized US patent law in an effort to harmonize our system with the rest of the world. A number of the AIA’s significant changes to patent law became effective last month on September 16, 2012, while the remainder of changes will take effect on March 16, 2013.
This article will review the basics of patent law and describe some of the AIA’s more significant provisions.
Patent Law Overview
Patent law gives the patent owner the right to exclude others from practicing their patented invention. This means means the holder of the patent can prevent others from manufacturing, using, selling, or importing the invention. However, a patent doesn’t automatically give the patentee the right to practice the invention himself since, it may still be restricted by other patents.
There are three types of patents one can be granted:
- Utility Patent (for the functional aspects)
- Design Patent (for the ornamental aspects)
- Plant Patent (for new or distinct varieties of plants).
The most common patent is a utility patent, which can be granted for a process, machine, manufacture, or a composition of matter.
Before being granted a patent, the invention must qualify as useful, novel, and non-obvious. In addition, your application must meet the detailed requirements for descriptions and drawings.
America Invents Act: The Changes
In total, there are about twenty changes that the America Invents Act (AIA) makes to US patent law. However, there are a few that are more important and warrant our closer attention:
Best Mode (Effective as of September 16, 2011)
The best mode is an application requirement, in which the inventor must disclose the best way to practice the invention. With the implementation of the AIA, failure to disclose best mode is no longer available to the USPTO (United States Patent and Trademark Office) as a ground for invalidity, unenforceability, or cancellation of a patent.
Prior Art Submission (Effective as of September 17, 2011)
Third parties have always been allowed to submit prior art in another’s patent application with the intent to block the grant of the patent. But now, those third parties remain anonymous and the USPTO also doesn’t have to inform the patent applicant that third party prior art has been submitted on their filed application.
First-inventor-to-file (Effective March 16, 2013)
One of the most important changes to patent law has to do with priority. Starting on March 16, 2012 priority will be given to first inventor to file an application, or to the first inventor to disclose the invention to the public, assuming that they then file within a year. The implication with this change is that an applicant will need to file early and file often. This new system will replace the “first to invent” regime. Also, the inventor now has a one-year grace period between public disclosure of an invention and the actual filing of the application.
Changes in the Definition of Prior Art (Effective March 16, 2013)
The new definition of prior art now provides for globalization, which means if an invention was in practice anywhere in the world, the applicant cannot obtain a patent for their supposed invention. Therefore, prior art has expanded and no matter whether it’s domestic or foreign prior art, the filing date of that prior art rules. Also, “known or used by others” is eliminated from the definition of prior art. Added to the definition is prior art that is in “public use”, “on sale”, or “otherwise available to the public” no matter where in the world. Also, the 1-year grace period for third party prior art is eliminated, unless the prior art was derived from the patentee or the patentee disclosed first.