Potential Problems with the New Patent Act

September 27, 2011

There is a great deal of debate in the intellectual property community as to how the America Invents Act (“AIA”) will play out for inventors. The first thing to keep in mind is that the biggest change in the law – the move from a “first to invent” system to a modified “first to file” system – does not take effect for 18 months. Under the current regime, inventors have to prove – sometimes via a protracted legal battle – that they are the first one to come up with the invention. The AIA and its modified first to file system will certainly make it quicker and simpler to decide who should get the patent for an invention.

It is also more in harmony with the first to file system used in most other parts of the world. For those unable to file a full application quickly, there’s also the possibility of filing a more limited “provisional application” that can serve as a placeholder for up to 12 months. One problem with the first to file system is that in the long run it is still likely to favor large companies, which have the staff and resources to get patent applications in quickly, over smaller companies and individual inventors that do not have such resources.

The AIA retains some elements of the one-year grace period that exists under current law (thus the “modified” first to file system), specifically those relating to disclosure of the invention prior to filing an application. Under the AIA, a disclosure made within a year before filing is not prior art if the disclosure is made by the inventor (or by someone who obtained the information directly or indirectly from the inventor). Further, a public disclosure by another before the inventor’s filing is not a bar to filing the patent if the inventor made a public disclosure before the other party’s disclosure and the inventor’s filing was made within a year of the inventor’s disclosure. As a result, some see the new law as a “first to disclose” system.

Public disclosure of one’s invention is fine if the intention is that patent protection will only be sought in the U.S. The problem with public disclosure arises when an inventor also may want to seek patent protection for the invention in countries outside of the U.S. In most countries around the world, public disclosure of an invention will result in the loss of patent rights in the disclosed material. Thus another problem with the new system is that it will encourage disclosure of an invention in the U.S. even though that disclosure may result in the loss of international patent rights in the invention by inventors who don’t know better. Of course one way to avoid this problem is to avoid public disclosure until the patent application or provisional patent application has been filed, but again inventors have to know better.