America Invents Act – Filing and Disclosure Strategies

Those of you who subscribe to Hal Wegner’s IP news update emails will have recently received an email enclosing a very brief synopsis of how the “New Law” of first-to-file (or more accurately first inventor-to-file) can impact patent applications filed after March 15, 2013, even if an earlier priority date is claimed. The paper has, somewhat for effect, the title “Death of Current Continuation Practice: March 15, 2013” and provides support for Hal’s contention, shared by many including myself, that there will be a rash of patent applications filed in the US and overseas prior to March 16, 2013 from applicants seeking to benefit from the “Old Law” first to invent system. For more on this topic, and other key provisions of the AIA, I recommend you to Hal’s more complete work “The 2011 Patent Law: Law and Practice” available from the Foley & Lardner website.

The prior art exclusion in the AIA, known as the inventor 1 year grace period, also provide opportunities for inventors after March 15, 2013, primarily those interested in just the US market, to publish their invention, thereby “fouling the nest” for third parties seeking to patent essentially the same invention, but still enabling the inventor to benefit from patent protection by filing an application within a year from the publication date. There was some lobbying prior to the passage of the AIA to remove the grace period, since it added uncertainty into the system – a third party was left in limbo for 30 months or more (12M grace period +18M publication) following publication not knowing if the published matter was also patented. But to the chagrin of many it passed as part of a compromise on other measures. It will be interesting to observe if this tactic is used extensively in some quarters, for example by US Universities and SMEs who need to publish to gain financial support or as part of their charter.

Whether or not publishing before filing becomes an established practice for some, it does seem to me that after March 15, 2013 the number of US Provisionals filed will increase significantly, especially with incremental improvements covered in sequential US Provisional filings during the priority year. Some commentators have suggested that the AIA will have the opposite effect, driving inventions underground with inventors relying on trade secret protection. We’ll see, but when the dust settles, my prediction is that there will be a noticable step up in US filings in the years after 2013.

Image credit: RachelH

2 Comments on “America Invents Act – Filing and Disclosure Strategies

  1. While I predict a likely increase in both increased trade secret protection and provisional patent applications, I think increased use of trade secret protection may be more likely. True, filing a provisional patent application might only entail paying the USPTO about $100, but unless an inventor also consults a patent attorney who drafts adequate claims (in the process spending thousands of dollars), the provisional patent application filed will likely end up being worth less than the paper it’s printed on. Incidentally, I’ve increasingly heard of recent cases in which inventors combined trade secret and patent protection, which is quite an interesting development. In any case, I would bet that, in part due to the AIA, trade secret protection will be one of the next hot trends in IP litigation.

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