Borrowed from USPTO.GOV
Just last month, the Leahy-Smith America Invents Act (“AIA”) was signed into law. The impact of these changes will be significant, and as the USPTO characterizes it, the AIA serves as “the most comprehensive overhaul to our nation’s patent system since 1836.” Yes, wow.
The AIA implements numerous changes, but in my opinion, the most significant, earth-shaking change is the toggling of our First-to-Invent system to a First-to-File one. Since the beginning of time, and up until this change, the US has stood by its “fairness” position that, generally speaking, the first inventor had the sole right to patent protection covering his or her invention. And this steadfast posture withstood criticism from the rest of the world, which for the most part follows a First-to-File regime. Perhaps the most notorious example of our prior system is the Gray-Bell Controversy over the patenting of the telephone. Bell’s Patent was filed an hour or two before Gray’s, so he would have been successful over Gray even under our new system. But that controversy turned on the fact that Bell had “invented” the telephone first.
So how does this change effect the present? It completely changes our strategy. No longer is it prudent to “test the waters” or “refine the invention” without an established filing date, whether by a Provisional or Regular Patent Application. Before, a properly evidenced date of invention would save the day over another inventor of the same invention. But now, the extra step of being the first to file is mandatory to guarantee patent protection.
As to the AIA, it’s important to note that the different AIA provisions go into effect at different times. Some go into effect immediately, with others going into effect at specified time periods after enactment. The First-to-File provision starts March 16, 2013.