Leahy-Smith America Act and the First-To-File Provision

PatentWe are almost to the one year anniversary of the implementation of the First-To-File provision of the Leahy–Smith America Invents Act (AIA).  Although the act was signed into effect in 2011, the law was actually enacted in phases over the course of several years. The First-To-File provision took effect March 16, 2013.

What is the provision?

In the past, anyone applying for a patent would be subject to first-to-invent rules.  The Leahy-Smith act has changed to a first-to-file rule.  The law is actually very complex and there are many exceptions, but generally, what this means is that pre-2013, if multiple people file an application to patent a “widget”, the one who can show he invented it first would be granted the patent.  Post-2013, outside of a first-to-invent grace period, the first inventor to file will would be granted the patent. 

What is the Concern?

When the law was enacted, there were two primary concerns: bias against small investors and a push to keep inventions secret.

A concern is that inventors and scientists will be scared to share their findings, fearing that someone else could actually file the patent first.  In the medical world, where one new product could save millions of lives, this could have an unintended negative domino effect.

What has happened in the past year?

The patent office is seeing a definite increase in provisional patent applications, which is less costly and complex than a full application, but also holds their rights under the first-to-file provision.

Lawyers are also seeing a process change in how universities, corporations and scientists invent something.  The consideration of what to patent and when to start has now become one of the first steps in the process; whereas in the past it could have occurred in the middle or near the end of the process.

The patent office is also showing an increased use of inter partes review proceedings.  This is an internal process used by parties who wish to challenge a patent application.  The end result is that fewer cases are being tried in the courts and more are being handled by the patent office process.

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