‘Ware the Ides of March (2013)

by YourPatentGuy on January 22, 2013

We have finally arrived with the full complement of America Invents Acts changes that President Obama signed into law nearly 18 months ago. By its terms, the final provisions go into effect 16 March 2013.

You’ve heard this before, about the changes including First-to-Invent becoming First-to-File. It will be official starting 16 March 2013. Other changes include issues relating to different prior art, derivation proceedings, and assignment/ownership considerations.

Even though we’ve been referring to the changes as First-to-File, I must remind you that you still must be an inventor to file. That is what derivation refers to – a person filing was not an inventor, but derived the invention from another person. Unfortunately Congress has made it difficult to actually implement its derivation proceedings.

I’ve been asked by several inventors about how they should prepare for the final phase of implementation. The general concensus is to file as early as you can, and if possible, to file before 16 March 2013. Various fact-patterns have emerged where it suggests that, with perfect knowledge of facts that can sometimes be hard to obtain in advance, it may be advantageous to file after 16 March. What used to be called an interference (two inventors claiming essentially the same subject matter at the same time) were rare  and caused a mini USPTO trial where the USPTO determined who invented what subject matter first. The default was to award inventorship to the first of the parties to file, unless a later filing inventor had sufficient proof to show an invention before the other. Most times, the proof was lacking and the default condition wins, making the system largely a first to file system in practice. As you can see, dates of invention and inventor log books will become less important after 16 March 2013.

Contact me and we can discuss particulars of your case, or if you would like to know more about these changes.

Our friends at Klarquist Sparkman, LLP have produced a video that may help you understand the changes (I cannout vouch for the accuracy of its content.)

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