Beware Of Patent Reform

Goodbye first-to-invent, hello first-inventor-to-file.

Erik J. Heels

As you may recall, so-called “patent reform” law (The Leahy-Smith America Invents Act – or “AIA” for short) was passed on 2011-09-16 (http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act) and has been incrementally taking effect ever since. As such, Friday 2013-03-15 is the final day to file patent applications under the old first-to-invent system, as the first-inventor-to-file system starts 2013-03-16.

Practically, the AIA’s change to first-inventor-to-file should have little impact on startups and other small businesses. For example, under the old first-to-file system, the first inventor was determined by an “Interference” proceeding before an administrative department of the USPTO (the BPAI). Under the new first-inventor-to-file, whether someone “invented” or “derived” an invention will be determined by a “Derivation” proceeding before an administrative department of the USPTO (the PTAB). Each of these proceedings is expensive, time-consuming, and (for startups and small businesses) extremely rare.

Like most new laws, the AIA has language that is ambiguous and whose meaning will only be determined over time (typically via litigation). As such, Clocktower anticipates that the rate of new patent filings under the AIA will increase in the short term. This should result in longer patent-pending periods and longer wait times from an initial nonprovisional patent application to a first office action on the merits.

The AIA was passed largely in the name of patent reform itself – and to satisfy a perceived need to “harmonize” US patent laws with Europe and other regions/countries. As you know, I believe that harmonization for harmonization’s sake is silly, but it is politically popular, so there you go.


Erik J. Heels is a trademark and patent lawyer, Boston Red Sox fan, MIT engineer, and musician. He blogs about technology, law, baseball, and rock ‘n’ roll at ErikJHeels.com.

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External Links

  1. Prof. Jason Rantanen: In Memoriam Best Mode (2012-05-11)
  2. Practically Important Elements of the America Invents Act of 2011 (2012-01-03)
  3. Andrew T. Pham: Top Ten Action Items in response to AIA (2011-11-04)
  4. Robert Plotkin: U.S. Enacts Historic Patent Reforms (2011-10-13)
  5. Chelsea A. Loughran: America Invents Act – Patent Reform
    Is Finally Here
    (2011-09-30)
  6. Nitin Gupta: What the Recent U.S. Patent Reform Law Means for Startups (2011-09-21)
  7. Ben Popper: New Patent Law Only Makes Life Harder for Startups and Universities (2011-09-19)
  8. USPTO Director David Kappos: Re-Inventing the US Patent System (2011-09-16)
  9. Prof. Mark A. Lemley: Things You Should Care About in the New Patent Statute
    (2011-09-16)
  10. Howard Skaist and Ted Karr: Defining Prior Art under the Leahy-Smith AIA (2011-09-13)
  11. Prof. Dennis Crouch: The Court’s Future Role in the International Harmonization of Patent Laws (2011-09-13)
  12. Scott M. Fulton: Patent Reform Passes the Senate with Teeth, Heart Missing (2011-09-11)
  13. Kit Eaton: What The New Patent Reform Act Means For Innovation (2011-09-08)
  14. Senator Maria Cantwell: This is not a patent reform bill. (2011-09-08)
  15. Jason Rantanen: The Effects of the America Invents Act on Technological Disclosure (2011-09-08)

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