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March 16th, 2013 is the latest milestone for implementation of the America Invents Act (AIA). Although the Act became effective September 16, 2012, implementation was phased.
Changes effective in March include implementation of a First Inventor To File (FITF) system, the definition of Prior Art, and the introduction of Derivation Proceedings. Changes are largely to harmonize US patent law with other countries' patent laws. Note that client circumstances vary, these points are general in nature and may or may not be applicable to you. Please contact us with any questions at (603)886-6100 or by email at [email protected]
WHICH LAW?
The Old Law applies for applications filed BEFORE March 16, 2013. First to Invent allowed inventors to "swear behind" a reference if the invention came first.
The New Law applies to applications filed ON or AFTER March 16, 2013. In most cases, even though you / your company invented first, if another inventor or company files first, the first to file wins - effectively, a race to file.
REASONS TO FILE BEFORE MARCH 16:
I. UNCERTAINTY: Under the new law, there will be a period of uncertainty of interpretation. Some language has multiple interpretations.
It generally takes years and multiple court cases before complete clarity of meaning of major new legislation is obtained.
II. SECRET PRIOR ART: Competitors' confidential activities that may have prevented them from getting a patent, might not bar them from patenting technology in critical areas after March 15th. Filing your own applications now might predate them, and avoid your being blocked by their confidential activities.
III. NO SWEARING BEHIND: Applicants will no longer be able to use proof that they invented first to overcome another who filed first. New "derivation" proceedings provide an option to fight another party's first filing of a same or similar invention, but only if the other inventor derived their invention from yours.
WHAT TO DO?
- CLEAR THE ATTIC. Review your recent and ongoing engineering projects, review and prioritize invention disclosures for the most important technology, and advance them for filing.
- MONITOR COMPETITION. Identify any third party publications that could block applications filed on or after March 16th.
- FILE NOW. Submit invention disclosures in the next week or two to ensure patent application filing before the March 16 deadline.
BOTTOM LINE:
For most clients, the current rules are likely to be more advantageous than the post-March 16th rules. The details, though, are complex and sometimes subtle. Should you have questions on particulars, please contact us early. The industry anticipates an activity surge in the days leading to the 16th, and submissions to the patent office may be unusually difficult to confirm on the 15th. Filing even a day or two early might make a difference in gaining priority and assuring success.
Copyright 2013, Maine Cernota & Rardin
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