March 16, 2013 is when the U.S. begins to move from a “first-to-invent” system to a “first-to-file” system under the Leahy-Smith America Invents Act (“AIA”). On that day, references and activities that can constitute prior art will also expand under the AIA. In view of these changes, it may be worthwhile to evaluate new invention disclosures and patent applications now to assess whether or not they may be affected by the new AIA provisions.
For instance, as a result of the new AIA provisions, inventors cannot use the date of conception of their invention to overcome a reference. In other words, a prior art disclosure cannot be disqualified (or antedated) by showing that the inventor invented the claimed invention before the effective date of the subject matter in the prior art disclosure.
Likewise, a public disclosure (in the United States or abroad) before the filing of an application can now be more broadly used to attack patentability. For example, the AIA provisions will include as prior art a public use or sale of an invention in a foreign country.
Exceptions exist. In particular, the AIA retains a limited, one-year grace period for application filing after an enabling public disclosure by the inventor or someone who derived the disclosure from the inventor.
Various options are available to applicants for protecting inventions in view of the AIA provisions. For instance, by filing patent applications on or before March 15, 2013, applicants can obtain the benefits of the current first-to-invent system. Likewise, by publishing invention disclosures on or after March 16, 2013, applicants can render unpatentable later-filed patent applications by others. Similarly, applicants can preserve both U.S. and international patent rights by filing a patent application before an invention disclosure.