The America Invents Act Is a Game Changer for Patent Seekers

In what one attorney called the "most important change to patent laws since Thomas Jefferson wrote patent laws into the Constitution," the first portion of the America Invents Act, or AIA, went into effect in September 2012. The AIA's major component will go into effect in March 2013.

While the AIA had bipartisan support, including that of the Obama administration, only time will tell the true impact of these sweeping changes.

A patent is an exclusive property right granted to an inventor by the United States Patent and Trademark Office, known as the USPTO. A patent lasts 20 years from the filing date, but is only effective within the United States and its territories. The basis of congressional power to regulate intellectual property such as patents is the U.S. Constitution, which says, "Congress shall have power ... to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

A patent does not confer a right to create, use or sell an invention, but as federal law says, it confers "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States, or importing it here. While the USPTO grants the right of exclusion, it does not enforce patent violations, but leaves the patent holder to enforce it on his or her own.

The AIA is indeed a substantial change. The main reform provisions of the law will take effect in March 2013 changing the U.S. patent system from a "first to invent" to a "first to file" system. The current "first to invent" system has been in place since the U.S. issued its first patent in 1790. Under this system, the first inventor to create a design, product or process is granted the patent. Yet, this can lead to disputes between inventors over who invented first.

However, "first-to-file may work to the disadvantage of an individual inventor with few resources, and to the advantage of larger, more resource-rich, entities, able to quickly perfect their ideas into filed patent applications," observes John O'Rourke, a Registered Patent Attorney with WHGC, PLC. The new "first to file" system aligns the U.S. with European practices and makes the date of filing the patent application the critical date.

"The first-inventor-to-file provision of the America Invents Act, one of its hallmarks, brings greater transparency, objectivity, predictability, and simplicity in patentability determinations," said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. "At the same time, the provision brings the United States closer in harmonizing our patent law with those in other countries around the globe."

A patent holder cannot expect the government to enforce his or her right of exclusion. Unfortunately, the fight against counterfeiting, piracy and intellectual property theft can be expensive, especially if patent litigation becomes necessary. If a patent infringer refuses to stop on his or her own, a patent holder can sue the infringer in federal District Court. Only a court can officially determine if there is in fact a legal infringement. If either party disagrees with the court's ruling, he or she can appeal to the federal appeals court, and then to the U.S. Supreme Court.

Patents are an important part of the U.S. economy and the AIA is about to radically change the way patents are granted. Though the change to a "first to file" system aligns the U.S. with the rest of the world in the way patents are issued, only time will tell if the change will have the intended effects as outlined by Under Secretary Kappos.

If you have questions about the new patent law, consult an experienced and knowledgeable intellectual property attorney.