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Preparing for patent law change under the America Invents Act

On March 16, 2013, the “first inventor to file” provisions of the Leahy-Smith America Invents Act (AIA) come into effect. These provisions introduce a significant change in U.S. patent law and will affect patent-filing strategy in the United States.

These provisions change a founding principle of patent law in the United States by rewarding patent filing date, and not the date of invention, as the basis for securing the right to a patent. Also, compared to existing law, there will be no geographic restriction to prior art, such that public disclosure, public use or sale made anywhere in the world before the effective filing date of a patent application can defeat patentability.

These provisions apply to patent applications that have a priority date on or after March 16, 2013. Since these changes alter the effects of prior art, patent owners are filing and updating patent applications ahead of this date. Rushing to file before March 16, 2013, may not be advantageous for all patentees, nor, after March 16, 2013, will hastily filing patent applications. Filing too soon may provide a false sense of security if other patentability requirements are not met, and may lead to premature public disclosure of subject matter.

The AIA has not changed the written description and enablement requirements for patentability. Applications must describe and teach how to make and use the full scope of what is claimed. For many technology areas, including biopharma technologies, these patentability requirements are rigorous. A priority date is awarded for claimed subject matter based on the date it is first supported by the disclosure in accord with these requirements. An incomplete or poorly drafted patent application may not entitle a patent claim to the filed priority date, thereby exposing the claims to intervening prior art, including the patent applications of others. Premature filing risks grant of a patent with unduly narrowed patent scope that does not cover a commercial product or a patent or whose scope readily can be avoided by others.

“First to file” patenting strategies are not new for U.S. applicants, since commercial markets are worldwide and most companies file outside of the United States. Except for limited grace periods available in some countries, the patent laws of all other jurisdictions are based on first to file laws that require absolute novelty of claimed subject matter. Also, with a view to U.S. markets, the new law in the United States provides grace periods for a patentee's own disclosures and earlier unpublished patent filings.

While the “first inventor to file system” is a significant change, patent practitioners and potential patentees must remember that not everything has changed. While it likely will become common practice to file applications earlier and more often than under the existing law, filing strategy should be evaluated in light of the particular technology area, the state of development of the technology, the scope of protection sought, the competitive landscape and the general business interests of a company.

Submitted by Stephanie Seidman and Karen G. Potter, McKenna Long & Aldridge LLP.

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