Since the formulation of the patent system, with the adoption of the United States Constitution in 1787, the U.S. has focused on awarding a patent to the first inventor to invent. Recently in 2011, President Obama signed into law the America Invents Act (AIA) that changes the preexisting first-to-invent system into a first-inventor-to-file structure. This was an effort to harmonize the U.S. patent system with the European and other patent systems around the world that already use the first-to-file structure. Two substantive differences between preexisting patent law and the AIA are the determination of what is prior art and the first-to-invent v. first-to-file systems.

Prior Art Under Preexisting Patent Law and the AIA

Prior to the AIA, an inventor could disclose their invention through a printed publication, sale of the invention, or through the invention becoming publicly used, all the while maintaining the possibility of patent protection as long as the application was filed within one year of the disclosure. Furthermore, this public use or sale of the invention had to occur in the U.S., but the printed publication could come from international sources. Printed publications under the preexisting patent law ranged from professional journal articles to presentation slides and handouts.

The AIA also considers printed publications, sale of the invention, and public use as prior art while prosecuting a patent with the United States Patent and Trademark Office (USPTO). Similarly, under the AIA, if an invention is disclosed, accidental or otherwise, an inventor still has a 1 year “grace period” in which to file a patent application. In contrast, under the AIA, public use and the sale of the invention, like printed publications, will no longer be limited to U.S. activities but, rather, will be considered on an international level. This will lead to more prior art references and ultimately make obtaining a patent more difficult. It is important to note that the AIA no longer allows an inventor to antedate—establish the inventor “invented” their invention prior to the date of the reference—a prior art reference. Thus, two ways to eliminate a prior art reference under the AIA are to argue the reference does not anticipate the present invention or to establish a disclosure for the present invention prior to the date of the reference. However, one needs to be careful with proving prior disclosure because if the disclosure was more than one year prior to filing, the applicants own disclosure will not only eliminate the reference but will also eliminate the applicants right to patent protection as well.

First-to-Invent v. First-to-File

The preexisting patent law gave patent protection to the first inventor regardless of whether the inventor filed for an application first. To the contrary, the AIA awards patent protection to the first inventor to file, regardless of whether or not the inventor was the first to invent the invention. Therefore, if an invention is independently invented by two different inventors at two different times, the inventor who files first will receive the patent. Accordingly, an inventor is urged to file a patent application as soon as the invention is known; otherwise, patent protection could be lost.

Effect on Legal Education

Implementation of the AIA has affected the way law professors are teaching U.S. patent law in law schools throughout the U.S. At UNH School of Law in Concord, NH, professors are attempting to provide students with the knowledge required to practice under both the AIA and preexisting patent laws because the AIA is being implemented in stages and students will be required to practice under both laws until the AIA is fully implemented. The difficulty is that even though there is more material to cover, class time has not increased substantially enough to accommodate the abundance of information that needs to be covered. Personally, I find trying to learn both laws to be a constant balancing act that, while difficult at times, is by no means unachievable.

For more information regarding the AIA please refer to http://www.uspto.gov or http://patentlaw.typepad.com/. If you wish to contact me directly to continue the conversation feel free to email me at christopher.baxter@unh.edu.