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On September 16, 2011, President Obama signed the Patent Reform Act of 2011 ( also called the Leahy-Smith America Invents Act (AIA)) into law. I am working with all my clients and their patent attorneys to update our patent strategies in light these important changes in the patent law. Especially important to inventors and IP managers are the following changes which goes into effect on March 16, 2013:
- First to File: US Inventors who file their inventions in patent applications first will have priority over inventors who file later. Previously, the US patent law granted priority to the inventor who was first to invent and documented their invention. One exception to the new law is an inventor who publishes his invention. The inventor can files a patent application within one year of the publication. The invention will have priority over other patent applications filed within the intervening year between publication and patent filing. It is key that companies review all their current invention disclosures and prepare to file them as patent applications on or before March 16, 2013.
- Redefining Prior Art: All US and foreign publications published before a patent applications filing date will be considered prior art. It is important to emphasize to all employees and consultants to be careful is disclosing, selling or using an invention before it is filed. Many attorneys are suggesting that their clients file early and often to avoid this issue.
- Derivation Proceedings: To protect against theft of an invention, the patent office allows for a derivation proceeding. In the case where an inventor 1 claims that patent claims issued to another inventor 2 were indirectly or directly derived from this/her invention, a derivation proceeding can be requested. Inventor 1 has the burden of proving the claimed invention was derived from his original invention. The statute of limitations for filing for a derivation proceeding is one year after the issuance of the patent. The patent community will be watching this new type of proceeding carefully.
Happy New Year!