The Impact of the America Invents Act on Patent Applications Filed On or After March 16, 2013

On March 16, 2013, under the America Invents Act (AIA), the United States will transition from a first-to-invent to a first-to-file country. Patent applicants should consider their filing strategies now to position themselves well for the forthcoming changes.

What is the Impact of the New Law on Patent Applications?

Under the new law, the effective filing date, 1 rather than the date of the invention, will be the critical date for applying prior art. Applicants will no longer be able to antedate a reference using their date of invention. Other provisions expand the scope of applicable prior art. First, the new law expands the prior art to include public sales and uses outside the U.S. Second, published U.S. patent applications are prior art as of their earliest priority date, even if the priority application was filed in a foreign country. 2 Third, the new law places limitations on the one-year grace period. 3 The new law also contains a Post Grant Review proceeding applicable to patents on applications filed on or after March 16, 2013. In some cases, these new provisions may negatively impact the patentability of an invention. However, the new law also provides certain benefits, such as providing a defense against novelty rejections that are based on patents/applications that are commonly owned or subject to a joint defense agreement. 4

Will the Old or New Law Apply to a New Patent Application?

The following rules determine which law will be applied:

  1. Old (pre-AIA) Law:
    1. All claims in applications filed before March 16, 2013, will be governed by the old law.

    2. All claims in applications filed on or after March 16, 2013, but claiming priority to an application filed before March 16, 2013, in which the priority application fully supports all of the claims, will be governed by the old law.

  2. New (AIA) Law:
    1. All claims in applications filed on or after March 16, 2013, with no claim of priority to an application filed before March 16, 2013, will be governed by the new law.

    2. All claims in applications filed on or after March 16, 2013, which claim priority to an application filed before March 16, 2013, but where at least one claim is not entitled to the earlier priority date, will be governed by the new law. 5,6

Should a New Application Be Filed Under the Old Law or New Law?

Whether a particular application would benefit more from the old law or the new law depends on the circumstances of each case. Furthermore, certain post-filing events, such as the type of prior art applied against the application, may be unpredictable. Given this uncertainty, the safest course of action may be to file two applications: one under the old law and one under the new law. 7

What Are Some Filing Strategies and Pitfalls?

Patent protection can be obtained under both the old and new law by filing one application (A) before March 16, 2013, and a second, continuation-in-part application (B) on or after March 16, 2013, in which (B) claims priority to (A) but which also contains at least one claim to subject matter that is new to (B) and not supported by (A). All of the claims in the (A) application would be governed by the old law while all of the claims in the (B) application would be governed by the new law.

For new U.S. applications that will contain new subject matter in the specification and claims – such as a non-provisional application claiming the benefit of a provisional application or a revised national stage application – the patentee should consider filing these applications before March 16, 2013, to obtain the benefits of the old law.

For new U.S. applications to be filed on or after March 16, 2013, claiming priority to a pre-March 16 application, if the old law is desired, then the patentee should be careful not to introduce a claim at any time during the prosecution of the new application that is not entitled to the benefit of the priority application. Otherwise, the new application will be automatically and irreversibly converted to an application governed by the new law.

Conclusion

In view of the imminent law change, we encourage you to consider whether it would be in your best interest to file any applications before March 16, 2013, even if it is earlier than scheduled, so as to benefit from the old law. We also encourage you to consider whether in certain circumstances you should also file a second application containing new subject matter on or after March 16, 2013, so as to be governed under the new law.

Please contact us if you would like more information about the new law or if we can advise you on a specific matter.

1 Under the AIA, the “effective filing date” is the earliest priority date to which a particular claim is entitled. The effective filing date can be based on a priority application filed outside the U.S.
 
2 Pre-AIA, such publications are prior art as of their earliest U.S. filing date.
 
3 For example, under the AIA, if the inventor is the first to publicly disclose the invention, then the inventor has a one-year grace period to file an application; however, if a third party publicly discloses the invention before the inventor publicly discloses the invention or files a patent application, then the third party disclosure is prior art.
 
4 Under the old law, common ownership or a joint defense agreement was a defense only to obviousness. Under the AIA, the defense covers both obviousness and anticipation. In addition, the common ownership/joint defense agreement provisions under the new law are based on the time of filing the application, rather than the time of the invention.
 
5 There is an important exception for applications falling in this category: the prior art and interference provisions of 35 U.S.C. §§102(g), 135 and 291 of the pre-AIA law apply to all claims in an application for which at least one claim has an effective filing date before March 16, 2013.
 
6 Under category (II)(b), an application that would otherwise be governed by the old law is automatically “converted” to one in which all the pending claims are governed by the new law by the addition – at any time during prosecution – of at least one claim that does not find support in a pre-March 16, 2013, priority date application. That is, once converted, all of the claims, including those that are supported in the pre-March 16, 2013, priority application, and all claims in subsequent applications that claim priority to that “converted” application, are irreversibly governed by the new law.
 
7 A patentee might even consider filing three applications: (I)(a) or (I)(b); (II)(a); and (II)(b). As noted in footnote 5, an application filed under category (II)(b) will be subject to the new law except for 102(g) prior art and interference provisions; for these provisions, the date of invention is important.

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