A. Major Change Resulting from the America Invents Act (AIA)
The subject of “first inventor to file, replacing the current “first to invent” system, has gotten a large amount of the publicity.
All patent applications with an effective filing date on or after 16 March 2013 are subject to the new law. However, any application already pending as of 17 March 2013, can be brought under the new law if the scope of any claim is changed during prosecution on or after that date. How much claim change will be necessary to trigger this jump to the new law is yet to be determined.
However, this new system includes a limited one-year grace period. Any public disclosure by or on behalf of the inventor effectively cuts off a third party who actually files a patent application before the inventor files. It is not absolutely clear what public disclosure will trigger the one-year grace period, that is, will it be determined to be only published disclosures, or will it also include public use or a sale. Some have speculated that where terms in the new law are the same as those established under the current law, they will be interpreted to have the same meaning and scope. That remains to be seen.
In another provision that is entwined with first inventor to file, all prior art is now worldwide, where prior law limited some priority art to “US only.” We will explore prior art aspects.
The general consensus among patent practitioners is that provisional applications will become more important and will be more widely used, in order to formally establish a solid date ahead of any other later filer. Some feel that relying on the new, limited, one-year grace period is fraught with danger and should be side stepped by filing provisional’s early and often.
As an aside, since all the countries of Europe and many others around the world have been under a strict first-to-file system since 1978, the US has, to significant extent, been under a first-to-file system for all those years. The question of who invented first arises so seldom, approximately one one thousandths of one percent, changing to a first inventor to file system sounds much more significant than it is in actuality.