Last Friday, September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (available here) into law. The America Invents Act makes significant changes to the U.S. patent system. Among other things, the America Invents Act:

  • changes the patent system from a first-to-invent to first-to-file regime
  • eliminates the year-long grace period following public disclosure

What do these changes mean for the typical patent applicant?

(Additional aspects of the America Invents Act will be discussed in future blog posts.)

First to File Regime

Since the beginning of the U.S. patent system, the first person to invent is the one who has priority when multiple inventors claim the same subject matter, regardless of when each person filed their respective patent applications. The America Invents Act changes that. When this change goes into effect (in March, 2013), a patent or patent application that claims or discloses the same subject matter of a later-filed patent application will act as prior art to effectively bar the latter patent application from issuing. In other words, it no longer matters who invented first anymore--it only matters who filed first.

Grace Period

Current law provides that a patent may be granted even if the claimed subject matter was disclosed or on sale up to a year prior to the filing date. The America Invents Act will eliminate this one-year grace period, so that if there has been any disclosure, sale, patent application, etc. of the claimed subject matter prior to an application's filing date, the applicant will not be entitled to a patent. One exception to this rule is that a disclosure will not prevent the patent from issuing if the disclosure was made by an inventor or by another who obtained the disclosed subject matter from an inventor.

Why did Congress Make These Changes?

America is the only major industrialized country that adheres to a first-to-invent regime. In the bill, Congress provided its three-fold rationale for enacting the America Invents Act:

  • administer the Constitutional mandate for the patent system: "promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their discoveries;"
  • "provide inventors with greater certainty regarding the scope of protection provided by the grant of exclusive rights to their discoveries;" and
  • "promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures."

Impact of the Changes

While it is not possible to predict how these changes will affect the behavior of the patent-applying masses, I speculate that the number of patent filings will increase by a significant margin. Before the changes go into effect, an inventor has priority over subsequent inventors as long as he exerts reasonable diligence in reducing his invention to practice. He also may obtain a patent even if the invention claimed was on sale during the year prior to the application filing date. The America Invents Act might take away the leisure and privilege of waiting until an idea has been fully developed. Instead, inventors will file as soon as possible to minimize the possibility of losing rights due to a prior filing, sale, or publication.

The need to file as soon as possible will likely be most burdensome for individual inventors and companies with a smaller patent budget. Provisional patent applications will probably be used, more than ever, to try to bridge the patent-spending gap between such entities and larger corporations.


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