The National Law Review recently published an article regarding New Patent Laws written by Gregory L. Porter with Andrews Kurth LLP:
The America Invents Act brought a host of changes to U.S. patent law. One of these changes that will take effect on March 16th, 2013 is a change from a “first to invent” system to a “first to file” system. All new applications filed on or after March 16, 2016 that do not claim priority to an earlier application will fall under the new law. Under the new law, the first inventor to file a patent application will normally prevail in obtaining a patent over a second inventor who filed later in time, regardless of which inventor was first to invent. This change will bring the U.S. patent system in harmony with most of the world in this respect.
There are other implications of the March 16th change in the law. Among these implications is that the prior art scope potentially broadens for those new applications filed after March 16th. That is, sales outside of the U.S., as well as any prior public use, may be considered prior art under the new law, whereas these would not have been considered prior art previously. Moreover, published applications (both international and U.S.) will be considered prior art dated as of their earliest filing date, even if such filing date is a foreign application. Therefore, companies should not only ensure they win the race to the patent office after the March 16th date change to the patent system, they should also consider filing applications prior to March 16th when possible.
© 2013 Andrews Kurth LLP
