America Invents Act

Win The Race To The Patent Office

Under the new provisions, the winner of the race to the patent office will have priority except in very narrow circumstances. After March 16, 2013, an applicant is entitled to a patent unless: ‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. 102(a)(1).

While exceptions are available for certain disclosures made by the inventor or a joint inventor, the U.S. Patent and Trademark Office (USPTO) has signaled it will interpret these provisions very narrowly. See, e.g., 77 F.R. 43767. Until further clarification is provided by the USPTO and courts, the best approach is to assume there are no exceptions and a grace period in the U.S. is no longer available.

Expansion of Prior Art

The new AIA provisions also expand the scope of prior art available against a patent application. Previously, a U.S. Patent or published U.S. Patent Application was available as prior art as of its U.S. priority date. After March 16, 2013, the earliest priority date for a U.S Patent or published patent application can extend back to a foreign priority date.

In addition, inventors will no longer be able to “swear behind” a prior art reference to demonstrate prior invention – priority of invention will not apply except in limited circumstances (e.g., derivation from another).

Sweeping “Old” Applications Under The New Law

Patent application filed before March 16, 2013 will be subject to the old law while applications filed after March 16, 2013 will subject to the new law. However, which law applies to applications containing claims with priority before March 16, 2013 and claims with a later priority date? The answer is the new rules – the rules with limited or no grace periods and an expanded scope of prior art. 125 Stat. at 293; 77 F.R. 43772. Consider the following example.

Bob files a U.S. utility patent application on January 2, 2013 with twenty claims (App #1). In February, Bob has a great new idea for his invention. On March 18, 2013, Bob abandons App #1 and files App #2, a continuation application claiming priority to App #1 with one claim directed to his new great idea and the original twenty claims in App #1. Which law applies to App #2?

Because App #2 contains a claim that only has priority to March 18, 2013, the entire application will be subject to the new law despite the fact that the twenty other claims have priority back to January 2, 2013.

“First Inventor To File” Strategies

What steps can you take now to preserve patent rights before March 16, 2013? The old adage of file early and often has never been more applicable.

  • Identify inventions that can be filed in patent applications (provisional or utility) prior to March 16, 2013;
  • Identify subject matter (e.g., new data, new embodiments) that can be added to provisional patent applications filed after March 16, 2012 and converted to utility applications before March 16, 2013;
  • Identify applications that should be “walled off” after March 16, 2013 – i.e., no claims with a post-March 16, 2013 priority date should be added to these applications.

Contact: Jeremy A. Cubert, Esq. at or 703-734-0484, ext. 109

The information contained herein is for informational and educational purposes only and does not constitute legal advice, substitute for legal counsel, or establish an attorney-client relationship. You should not act or rely on any information contained in this website without first seeking the advice of an attorney.