How the New Patent Act Will Affect the Way Counsel Practice and Advise Their Clients

From 'First to Invent' to 'First to File'

The linchpin to a majority of the changes imposed by the AIA is the conversion of the U.S. patent system from a “first to invent” to a “first to file” system. The change to a first-to-file system will affect patent practitioners in several ways:

• Undue delay by the patent practitioner in preparing and filing an application can compromise the client's right to the invention.
• Prior art is defined under the new Act as of the filing date, not one year prior to the filing date or before the inventor made his invention.
• The transition to “first to file” will occur 18 months after the AIA becomes law. Within the next 18 months, there will be a rush to file applications so that they will be subject to the narrower laws governing prior art.

An inventor who made his invention second in time but is first to file a patent application will be entitled to a patent over the inventor who was first to make his invention but second to file a patent application. Because there is now a potential for a “rush to the Patent Office” to get the earliest possible filing date for an application, this revision will require patent practitioners to reconsider the manner in which they prepare patent applications. Under the prior law, a patent practitioner could take up to three months to prepare and file a patent application and still be considered “diligent” in establishing a constructive reduction to practice.
But under the AIA, the date of invention no longer matters for establishing priority of invention; only the filing date is important. The patent practitioner must file early to ensure that his client gets the best chance of priority for a patent.