U.S. Patent Law Change Effective March 16, 2013

The Leahy-Smith America Invents Act (AIA) has already brought about changes to the U.S. patent system, including increased U.S. Patent & Trademark Office (USPTO) fees, new inventor declarations, new standards for false marking actions, and new post-grant review proceedings, for example.

On March 16, 2013, one of the most significant provisions of the AIA will go into effect.  This provision will change the U.S. patent system from a first-inventor-to-invent (OLD) system to a first-inventor-to-file (NEW) system.

Due to the following differences between the OLD and NEW systems, some patent applicants may decide to take action to file new patent applications, or update the subject matter of existing applications, before the March 16, 2013 transition date in order to ensure applicability of the OLD system to such applications.

• Under the NEW system, patent applicants will no longer be able to rely on earlier inventive activity to antedate or "swear behind" prior art.  Instead, subject to some limited exceptions relating to (a) their own prior disclosures and (b) derivation of inventions, patent applicants will have to rely on their filing date to avoid prior art.
• Under the NEW system, more prior art will be available to Examiners.  For example, although public uses and sales under the OLD system qualified as prior art only if they occurred in the U.S., such uses and sales under the NEW system will qualify as prior art regardless of where in the world they occurred.  Also, although patent references under the OLD system qualified as prior art as of their U.S. filing dates, such references under the NEW system may qualify as prior art as of their foreign priority dates. 
• While the laws and regulations for the OLD system are relatively well-developed, it is still unclear in many significant areas how the courts and the USPTO will interpret and apply the NEW system's laws and regulations. 

The NEW system will apply to a patent application ever having any claim with priority on or after the March 16, 2013 transition date, including:

• A new patent application filed on or after the transition date;
• A continuation-in-part (CIP) patent application filed on or after the transition date, with at least one claim directed to new subject matter not disclosed in an earlier-filed parent patent application; and
• A nonprovisional patent application filed on or after the transition date, with at least one claim directed to new subject matter not disclosed in an earlier-filed provisional patent application.

As such, applicants who would like their unfiled invention disclosures or updates to existing applications (provisional or nonprovisional) to remain under the OLD system should make such new filings before the March 16, 2013 transition date.