As the dust settles after the storm caused by the conversion of the United States patent system from a first-to-invent system to a “modified” first-to-file system through implementation of the America Invents Act (AIA) on March 16, 2013, it is essential that companies and inventors avoid inadvertent disclosures of the company’s or inventor’s inventions on social media networks and the company’s website.
Social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations. Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason. If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.
There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.” The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.”
Perhaps most importantly, now that the United States has become a first to file country and abandoned our historic first to invent ways (see A Brave New World — First to File Becomes Law) it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.
Of course, a provisional patent application must be understood as nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States. Still, there are substantial benefits to beginning with a provisional patent application. As with most things in life, however, there are pitfalls that can and do trap the unwary and unknowledgeable.
The AIA is a complex bill that includes the most significant changes to U.S. patent law since at least the 1952 Patent Act, perhaps since the inception of patent laws in the United States in 1790. What makes these changes so significant is the fact that they are widespread and relate fundamentally to what is considered prior art, which at its base makes up the fabric of patent examination and review of issued patents for validity purposes. Add to it the procedural changes and the AIA easily is one of the most momentous, if not the most momentous, changes to patent law and patent practice ever. Thus, summarizing the AIA in a few pages while providing any semblance of exhaustive treatment is simply not possible. Notwithstanding, I endeavor to provide a high level overview of some of the provisions of the AIA that contain issues that could be characterized as traps for the unwary.
First, it is worth noting that the most significant changes did not go into effect right away. Rather, there were waves or phases of implementation. The first phase of implementation was relatively minor and occurred within the first 60 days. The second phase of AIA implementation became effective on September 16, 2012, and brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.
By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States became a first to file country (more or less), abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a true first to file system that resembles what first to file means to the international community. Thus, the United States remains an island on to itself with respect to whether a claimed invention is novel.
EDITOR’S NOTE: This year I will be speaking at the AIPLA meeting on The AIA: Traps for the Unwary. I will publish my paper here on IPWatchdog.com in segments over the next week. We also have on tap a wide ranging discussion with AIPLA Executive Director Todd Dickinson, and a few other AIPLA-centric pieces are in progress. Ultimately our AIPLA coverage will culminate, as usual, with full coverage of the AIPLA annual meeting, which takes place at the Marriott Wardman Park Hotel from October 24-26, 2013.CLICK HERE to register for the AIPLA annual meeting.
The America Invents Act (AIA),  signed by President Barack Obama on September 16, 2011,  ushered in many significant changes to U.S. patent law. The USPTO summarizes the changes that went into effect on March 16, 2013 as follows:
(1) Convert the U.S. patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. These changes in section 3 of the AIA are effective on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013. 
Honestly, it is impossible to in any single article or series of articles describe the magnitude of the changes ushered in by first to file. This is because Congress has fundamentally altered the definition of what is considered prior art. An applicant is still entitled to a patent unless there is prior art that renders the claimed invention unpatentable because it is not new or because it is obvious. But what references and information can be considered prior art? That is where things have fundamentally changed.
Considered by many as the most comprehensive revision to the United States patent system in over 50 years, the America Invents Act (“AIA”) represents progressive legislative reform intended to align U.S. patent policy with global precepts, i.e., systems which reward the “first-to-file” a patent application. Many AIA provisions modify or completely change the former first-to-invent (“pre-AIA”) U.S. patent system, with the most immediate and conspicuous AIA component — the establishment of a filing-based regime as of March 16, 2013 — serving as the hallmark and mark of U.S. patent reform.
Nonetheless, having only enjoyed 3-months of the AIA in its entirety, it is still too early to appreciate the de facto impact of this nascent legislation. The AIA has nevertheless ushered in transitional strictures that have uniquely placed research institutions in an ostensible patent-policy “reformation” with respect to technology evaluation and knowledge translation. While the pervasive nature of this new patent regime imparts an array of university-based concerns, the following Top 5 considerations are intended to reengage university professionals and employees with patent reform concepts and concerns during the initial “aftermath” of the AIA. For a quick reference guide please see America Invents Act (AIA) Chart for University Personnel.
President Obama signs the AIA on Sept. 16, 2011, setting the stage for first to file.
The America Invents Act (AIA) was signed by President Barack Obama on September 16, 2011. The most significant changes to U.S. patent law did not go into effect right away. Rather, there were waves or phases of implementation. The second phase of AIA implementation was ushered in on September 16, 2012, which brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.
By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States is now a first to file country, abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a first to file system. There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point.
It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the re-patenting of inventions, but it does that as well.
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