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

The America Invents Act (“AIA”), passed by Congress on Sept. 9, 2011, and signed into law on Sept. 16, 2011, imposes sweeping changes to U.S. patent law. There have already been many articles attempting to summarize the 140-page bill, but it is difficult to do justice to every aspect of the Act in a single article. This article focuses on how the new patent laws will require patent practitioners to change the way they 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.

Priority of invention is not the only concern that will dictate early filing. Once the “first to file” provisions take effect, prior art will be defined as of the filing date of the application, rather than one year before the application. Similarly, obviousness under ' 103 will also be determined as of the filing date of the application, rather than as of the date of invention. Further, invention without filing a patent application does not toll the date for establishing what constitutes prior art or what may have been obvious. So the scope of prior art, already expanded forward by one year, will give rise to another day's prior art with each additional day's delay in filing.

What does the patent practitioner need to consider, and how should he work with his clients, to achieve the earliest possible filing date? First, clients can no longer afford to wait to involve their patent attorney until after the invention has been completed or after a test period has proven the commercial viability of the product. The practitioner should confer with the client early in the process so he can understand the commercial motivation, the progress of development of the invention, and proximity of bringing the product to market. From these and other consultations the client and patent counsel can together decide on the best approach for disclosures and assess the urgency of filing an application immediately.

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