America Invents Act Overview

America Invents Act: Key Patent Law Changes

The Leahy-Smith America Invents Act (AIA) was signed into U.S. law September 26, 2011, and includes significant changes to patent law. One of the most notable changes is the transition from a “first-to-invent” to a “first-inventor-to-file” patent system. This is effective for patent applications filed on or after March 16, 2013.

What qualifies as prior art also has changed as of March 16, 2013. A one-year grace period for the inventor’s own disclosure remains, but is weakened compared to the provisions under the previous first-to-invent system. The new rules create a time window between an inventor’s public disclosure and patent application filing date, during which others can publish similar work or work that builds off the inventor’s work. These intervening publications may prevent or hinder patentability of an invention.
 

What Should Inventors Know?

For WARF to best serve you, please be aware of the following:

Disclose inventions prior to publication. This helps preserve both U.S. patent rights and foreign patent rights.

Disclose as quickly as possible if you are unable to disclose prior to publication, or if there was an unintentional public disclosure. The time between your publication date and patent application filing date opens the door for intervening publications by others.

Publishing an idea, prior to filing a patent, does not guarantee patent rights. Your publication may bar others from patenting the idea, but intervening publications or patents by others may affect your patent position.

Timely turnarounds for documentation and reviews are critical. This allows for faster patent application filing, which can help prevent intervening publications and prior art references from developing.

All applications need to be fully enabled and supported to have a strong position against third party art. WARF plans to file quality patents as quickly as possible. The AIA does not change the requirements for fully supported and enabled provisional patent filings, which WARF files only under certain circumstances.

Time will tell how these new laws will be implemented by the U.S. Patent and Trademark Office, and it may be years before court cases and case law ultimately dictate how the new AIA provisions are interpreted. In the months and years ahead, we will continue our efforts to visit campus researchers and discuss these changes.

Our intellectual property management team stands ready to assist UW–Madison inventors, including faculty, staff and students. Feel free to contact a WARF intellectual property manager via email or call us at 608.263.2500.