On March 16, 2013, one of the most important and controversial
provisions of the "Leahy-Smith America Invents Act," or
AIA, is scheduled to take effect and this event will mark a
significant change in United States patent filing strategies.
Specifically, the new AIA provisions amend the Patent Act to
convert the United States from a first-to-invent system to
a first-to-file system. In addition, the well-known and
often used one-year grace period which allows a United States
patent application to be filed within one year after a sale or
public disclosure will largely be eliminated. These
provisions become effective on March 16, 2013.
The consequences of these amendments, and other changes related
to how the U.S. Patent and Trademark Office treats prior art, will
have serious negative repercussions on the patent
rights conferred by any U.S. patent application that is filed on or
after March 16, 2013 and create a "patent cliff."
From "First to Invent" to "First to
Currently under U.S. law, when two inventors independently
conceive the same invention and each files a U.S. patent
application for the invention, only the inventor who can prove the
earliest date of the mental conception of the invention is eligible
for a patent. This has long been true in the United States and has
not depended on whether or not that inventor was the first to file
a patent application. As a result, the U.S. has been known as a
first-to-invent patent jurisdiction.
However, all U.S. patent applications filed on or after
March 16, 2013, will be subject to the new
first-to-filesystem which will
permit only the first inventor who files a U. S. patent application
to be eligible to receive the patent. The
first-to-file system will not be concerned with whether or
not the filing inventor was the person who invented first; it will
consider only whether that inventor filed first. So, on and after
March 16, 2013, when two inventors independently conceive the same
invention, only the inventor who files the earliest patent
application will be eligible to receive the patent.
The first-to-file system has the advantage of
simplicity. It is difficult to prove when a person first mentally
conceived of an invention, but it is easy to prove the date on
which a patent application was filed. This enhanced simplicity,
however, comes at a cost: instead of rewarding the earliest
inventor, it rewards the inventor who wins the race to the patent
Elimination of the One-Year Grace Period
The March 16, 2013, AIA changes also include eliminating the
one-year grace period to file a U.S. patent application and
replacing that rule with a more complex arrangement. [Under the
current rule, if an inventor files a U.S. patent application within
one year after publicly disclosing the invention, the inventor can
obtain a patent (assuming the inventor can prove a date of
invention prior to the date of the public disclosure).]
The one-year grace period generally has allowed sufficient time
to determine whether the invention is valuable and warrants patent
protection, and to prepare a carefully drafted patent application.
Eliminating the grace period will significantly increase the
difficulty of obtaining and defending patents. While there is still
a limited grace period for disclosures by the inventor, the
one-year grace period historically enjoyed by U.S. patent
applicants will be no more.
If you are accustomed to relying on the one-year grace
period, you should consult with experienced patent counsel
regarding the March 16, 2013, changes regarding prior
What Do You Need to Do?
These "patent cliff" changes have real
consequences. To take advantage of the currentfirst-to-inventsystem and
one-year grace period, you should act quickly and plan to file your
patent applications before March 16, 2013, if at all
Because drafting a patent application requires significant time
and effort by the inventor and his or her patent lawyer, do not
delay in retaining experienced patent counsel and allow at
least four (or preferably six) weeks to prepare each
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In Allergan, Inc. v. Apotex Inc., Nos. 13-1245, -1246, -1247, -1249 (Fed. Cir. June 10, 2014), the Federal Circuit reversed the district courtís findings with respect to validity, holding that the asserted claims of two patents directed to methods of treating hair loss were obvious and vacating the district courtís grant of an injunction.