Perks and pitfalls of post-AIA prosecution
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Perks and pitfalls of post-AIA prosecution

The America Invents Act will dramatically change the rules governing filing a patent application. While some requirements have been simplified and streamlined, potential pitfalls remain for those who aren’t prepared

Attorneys who are unaware of new rules for filing patent applications under the America Invents Act could inadvertently put their clients at a significant disadvantage over the next few months. Luckily, panelists in today’s AIPLA Annual Meeting session, Declarations and Assignments and Effective Filing Date of Claims Under the AIA, will explain how to avoid such a scenario.

The session is designed to help anyone involved in filing patent applications navigate the issues arising from America Invents Act implementation. It will be split into two parts: declarations and assignments, led by Todd Benni of McDonald Hopkins, and effective filing dates, led by Stephen Weed of RatnerPrestia.

“These are two topics that people thought needed extra time and that’s why we picked them out,” says moderator Paul Kitch of Nixon Peabody.

Effective filing date

The new first-inventor-to-file system will apply to applications filed after March 16, 2013. In most cases, it will be preferable for inventors to file before then under the old rules, but Kitch says securing favorable conditions is not as simple as marking the date on the calendar.

One of the goals of moving from a first-to-invent system to the new first-inventor-to-file model is to harmonize the U.S. patent system with those of other countries. But attorneys serving multinational clients should be aware of some of the potential effects of handling an international patent portfolio under the new rules.

For example, Kitch warns that submitting both U.S. and international claims could change the date on which the USPTO considers the application to have been filed. If a company files an application in a European country before March 16, then later files in the U.S. after the deadline, the application could still be considered as having been filed under the old rules.

Conversely, an application which was filed before March 16, then has additional claims added to it later, may be considered subject to the new AIA rules. One of the consequences of this is that the application will be subjected to the new definitions of prior art, which have been expanded considerably under the AIA.

Expanded definition of prior art

The expansion of what is defined as prior art under the AIA may make it more advantageous for applicants to have their claims considered under the old rules.

For example, under current law, an applicant is not barred from patent protection in the U.S. if a third party uses or sells the same invention abroad. After March 16, foreign public uses and offers for sale can be considered as prior art references against a U.S. patent application for a similar invention.

“The change really expands the amount of prior art that can be applied to your patent application,” says Weed. “So there are certain advantages in obtaining a filing date prior to the changeover and maintaining it to take advantage of it for other applications.”

The AIA still allows a one-year grace period so that an inventor can avoid having his or her own foreign public use or sale considered as prior art. However, an inventor’s foreign public use or sale more than one year prior to the filing of the patent application will be considered prior art.

Streamlined procedures under the new rules

There are also some advantages under the new system, which has been streamlined to reduce some of the previous bureaucratic headaches. While inventors are still required to file a declaration as part of a patent application, the declaration can be filed as a combined document, instead of two separate documents. “It is a simpler form that is hopefully easier to understand for the inventor,” says Benni.

Applicants will also benefit from some additional mechanisms for circumstances in which the inventor is unable to assign the patent. Without a written assignment from the inventor or the inventor’s estate to the applicant, the patent belongs to the inventor. But if a company filing an application can show a proprietary interest in the invention because the inventor assigned rights to the organization or is legally obliged to, it can file a petition for a waiver.

This could result in saving the client money on the application fee and on attorney time. “We have had situations where we have had to chase inventors down in the past, and it has sometimes been a very time-consuming and frustrating process,” adds Benni.

He suggests that applicants who have provisional applications filed prior to the AIA may want to consider converting to that application before the new rules come into effect.

The ability to file for a waiver is a recent development which was created following comments from AIPLA on the USPTO’s proposed rules. In a letter to USPTO Director David Kappos in March, AIPLA argued that the proposed rules would “essentially maintain existing rules governing the requirements for an oath or declaration,” and would “perpetuate the existing problems that the AIA was intended to solve.”

In the letter, AIPLA argued that applicants, particularly corporations, often find it difficult to obtain an inventor’s signature, especially when the inventor is no longer working for the organization. It also argued that the proposed rule should be changed to make the U.S. system more similar to that of other countries, to “lay a solid foundation for building toward substantive patent law harmonization.”



• Declarations can be filed as a combined document, reducing paperwork

• If a company applying for a patent has proprietary rights but cannot obtain an inventor’s signature, it can apply for a waiver

• The changes bring the U.S. patent system closer to that of other countries, paving the way for the future harmonization of patent law


• Expansion of prior art to include public use or sale in countries outside of the U.S. leave patent applications open to more challenges concerning novelty

• Moving from first-to-invent to first-inventor-to-file may be a challenge for some small businesses and individual inventors with limited access to legal resources

• Filing fees have generally increased

This report was first published in the AIPLA Daily Report. Download the AIPLA Daily Report, published by Managing IP from Washington, DC from our conference newspapers page.

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