Patent Attorneys Advised On First-To-File Before America Invents Act Takes Effect March 16

Patent Attorneys Adapting To New Rules Under Patent Reform Act of 2011

Effective March 16, 2013, U.S. patent rights will switch from first-to-invent to first-to-file, a change that results from the patent reform act of 2011, known as the America Invents Act (AIA), passed by Congress and signed into law by President Barack Obama on September 16, 2011.

Beginning this month, any use, sale, publication or other disclosure to the public occurring anywhere in the world by anyone will stand as an absolute bar to securing a patent with one exception: An inventor will continue to enjoy a one year grace period from the date he makes any disclosure of the invention in which to file for a patent. This is the only instance in which an inventor may be able to defeat an earlier filing of another on the same invention based upon the earlier date of his disclosure.

Of course, these changes under the America Invents Act first-to-file system apply only to securing a patent in the U.S. None of these changes alter the playing rules for securing a patent in a foreign country. Those rules in many other countries are already based on a first-to-file system that each country has enacted for its jurisdiction.

Patent attorneys are advised to prevent compromise or loss of patent rights protection in the U.S. regarding a prior filing anywhere else in the world by filing for patent protection before Saturday, March 16, 2013.

America Invents Act PDF

America Invents Act Implementation Timeline

About The Juhasz Burge PC Firm

The Juhasz Burge PC Firm is a patent and intellectual property (IP) protection, counseling, licensing and litigation firm. Combining deep patent/IP experience, broad capabilities across a wide spectrum of industries and technologies, and extensive expertise in strategic counseling, The Juhasz Burge PC Firm collaborates with clients to help them better see, understand and realize the potential strategic value from their patents and intellectual property.

Paul R. Juhasz, patent attorney, has written extensively on matters of software patents, including the Bilski software patent decision; matters of diagnostic method patents, including two recent amicus briefs filed before the U.S. Supreme Court in the Myriad and Prometheus cases; and licensing matters including strategic monetization of intellectual property.