In our last two updates, we reviewed the new definition of prior
art as well as the exceptions thereto. In view of the intricacies
imposed by the upcoming expansion of the definition of prior art,
patent applicants should consider the following:
Filing patent applications on or before March 15, 2013.
Applicants can beneficially use this interim time period (between
now and March 15, 2013) to file applications thereby obtaining the
benefits of the current first-to-invent system. This can be
particularly important for inventions that have a long development
cycle and may be entitled to a substantially earlier date of
Publishing invention disclosures on or after March 16, 2013.
Applicants can consider early publication of their inventions, even
prior to patent application filing, in view of the AIA assuming
that they do not contemplate seeking protection outside the U.S.
and intend to file a patent application within one year. These same
publications can render unpatentable later-filed patent
applications filed by others.
Preserving both U.S. and international patent rights by filing
at least a U.S. provisional patent application before disclosing
Performing an early assessment of inventions, determining
whether the inventions are worthy of patent pursuit
internationally, or in the U.S. only, or should be held as a trade
secret, and then acting accordingly. If in the U.S. only, consider
In conclusion, the view of the AIA's new definition of prior
art, patent applicants are well advised to "file early and
file often," such as to avoid finding themselves precluded
from patent opportunities by competitors who file or disclose
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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In each of two essentially contemporaneous decisions, the U.S. Court of Appeals for the Federal Circuit rejected the patentee’s contentions on appeal that claim differentiation supported a broader construction than found by the district court.
Addressing a lower court's reasonable royalty determination that chose not to rely on the Georgia Pacific factors, the U.S. Court of Appeals for the Seventh Circuit recently affirmed the district court's reasonable royalty determination without discussing the Georgia-Pacific factors at all.