The America Invents Act, formally known as H.R. 1249 (“AIA”) has clearly been the most significant evolution to the United States’ patent regulatory landscape in decades. The most important change under the AIA is that America has joined the rest of the world in rewarding the first inventor to file a patent, known more commonly as the “first-to-file” rule.
Under the previously existing system, an inventor could provide that he or she was the first inventor, even if he or she was not the first to file, through laboratory notes and journals. Now, with a few exceptions, one needs to be the first at the doors of the Patent Office. If and when several people come up with the same invention, which happens more often than most people think, it does not matter who was actually the first inventor in time. What matters is who was first to sprint to the Patent Office to file.
Prior to passage of the AIA, the United States Patent and Trademark Office would declare interference between two inventors trying to get a patent on the same invention. Each inventor was required to provide evidence connected to their invention (including lab data, records, and dates establishing when they conceived of the invention). After analyzing this evidence, the Patent and Trademark Office would determine the “original” inventor. The AIA has changed all that.
The date of invention is now not as important, as U.S. patent law has become harmonized with prevalent international practices. Additionally, the AIA has initiated other changes. Besides the “first-to-file” rule, there was a change in the definition of “prior art.” As a rule, prior art consists of any information disclosed to the public in any form, or any prior practice that negates the claim that the patent covers new material. The AIA largely eliminated the older rule that only prior art developed more than one year before the filing date could count against the patent. It also removed another old rule by which the inventors could attest to legitimacy of prior art via an affidavit. Additionally, certain patents and publications now count as prior art as of their earliest foreign filing date, and not just their earliest filing date in the U.S.
This means that, for technology-based companies, the stakes are higher than ever. With patented technology serving as the basis for valuations and successes of start-up ventures, the AIA creates a very real race. Whoever files first is the winner.