The America Invents Act and its Repercussions for Inventors
A patent conveys exclusionary rights to the owner of the patent to prevent others from making, using, importing, selling or offering to sell an invention. In 2013, one of the most radical changes in U.S. patent law was ushered in by the America Invents Act (AIA). For decades, U.S. patent law stood out amongst most of the industrialized world for some of its unique tenets that were consistent with the American ideals of rugged individualism and capitalism. For example, in the past under the U.S. patent law, a patent was awarded to the individual inventor or inventors that were first to invent the invention. Also, the U.S. was among the minority of countries to provide a one year grace period for publicly disclosed prior art before that prior art could prevent the patenting of an invention. Consequently, the burden of filing a patent application early on during the product development cycle was lighter in the U.S. than in other parts of the world that had a first to file system. In other words, the first to file the patent application would be the one to obtain the patent regardless of when the invention was actually made. On the other hand, most of the rest of the world had an absolute novelty requirement that meant no grace period was provided so that publicly disclosed prior art could prevent the patenting of an invention immediately upon its disclosure.
Some have theorized that the old U.S. patent law was favorable to smaller entities such as independent inventors as it allowed them time to gather capital for investing in their inventions, deciding whether to obtain patents related to their inventions, and making other business decisions. These same people now think that the change in the U.S. patent law under AIA has removed some of these advantages for smaller entities. Specifically, the U.S. has substantially harmonized its patent law with that of the rest of the world in two important aspects. First, we now have a first to file system in the U.S. as in the rest of the world. This means that the patent is awarded to the first to file the patent application, regardless of when the invention was actually made. Second, the U.S. has moved closer in its stance regarding prior art with most of the rest of the world. Now, the applicability of the one year grace period applies only to prior art that is disclosed by the inventor or someone with ties to the inventor.
In practice, what does all of this mean? File patent applications early and file often as much as possible. This will prevent someone from patenting your idea and/or stopping you from getting a patent yourself. Therefore, it makes sense for entities, especially small entities such as start-ups and independent inventors, to seek patent advice from a registered patent agent or patent attorney early in the development process in order to evaluate freedom to use the idea and whether it is patentable. To keep costs to a minimum, a provisional patent application may be filed that has a reduced filing fee and that does not require the filing of formal drawings, which also keeps costs to a minimum. Once a provisional patent application is filed, the inventor has one year to decide if pursuing a full blown non-provisional patent application that could mature into an issued patent is warranted. If you have questions or comments, feel free to contact us.