The Leahy-Smith, America Invents Act (AIA) was signed into law by President Obama on September 16, 2011. The major change of the act transitions the U.S. Patent and Trademark Office to a first-inventor-to-file (FIFT) system which is more aligned with other countries’ patent systems around the world. Historically, the U.S. has always been a “first-to-invent” system, regardless of the date of action filing. This portion of the act will go into effect March 16, 2013.
How should innovative companies and manufacturers prepare now?
- Ensure that all public disclosures/offers for sale/uses ANYWHERE in the world are pre-screened for IP
- Keep good records of all “disclosures” including what was disclosed and the audience
- Continue to maintain lab notebooks/records of internal experiments, processes, etc.
Below are some hypothetical situations companies might find themselves in and how the AIA will impact your ability to disclose information (note “EFS” refers to electronically filing an application):
Hypothetical I: Here, clearly A has invented and filed before B.
Hypothetical II: Here, A invents, but B also invents and files first. So, B gets the patent.
Hypothetical III: Here, A invents and discloses. Then, within A’s one-year grace period, A files an application. B invents after A but files an application before A. A still gets the patent because his disclosure was made before B’s filing.
Are you sufficiently confused? EWI can help. EWI will be hosting a panel discussion on the topic of the America Invents Act on Thursday, January 10, 2013. In conjunction with the Columbus Intellectual Property Lawyers Association, EWI will host a luncheon panel discussion and members are invited to attend. For more information or to register for the panel discussion, please contact Michelle Laverty at 614.688.5160.