Over the weekend, the US patent system underwent one of the most extensive changes in its history, moving away from “first to invent” system that has been the backbone of the US patent system for as long as any of us can remember. What does that mean for Inventors?
The America Invent Act (AIA) First to File started on March 16th, 2013, implementing many changes that will move the US patent system closer to the systems of many foreign countries.
But will the change make inventorship obsolete in the US? After all, most foreign jurisdictions operate on a "first to file" system that rewards those that file a patent application first and not those who invent first.
The short answer to whether inventorship will still matter in the US is YES! Here are a couple important reasons why inventorship will still matter:
1. The AIA will not move the US to a pure "first to file" system. The AIA implements a system that rewards the first INVENTOR to file. So, proving inventorship of the patentable subject matter will still be an important step to obtaining and/or defending a patent.
2. Date of invention will still matter, although in a different manner than under the old system. In the "first to invent" system, the person that invented first received priority when to applications were filed on the same invention, so proving an invention date was critical. Under the new system, the date of invention can still be important in situations in which one party is trying to prove that the other merely copied their invention and are not inventors and cannot, therefore, obtain a patent on the invention. Being able to show when an invention was made and other important dates such as publication, etc. can greatly assist an inventor in proving that someone else filed an application based on learning about the inventor's idea.
So what does this mean? This means that keeping updated notes and dates will still be important under the AIA. Don't throw away those inventors' notebooks! Or, of course, one option is to migrate your inventors' notebook and other records online using Traklight's IP Vault so you can have third party verification of dates, times, etc. if you need that in the future.
That said, the new law has many complex areas that need legal advice, particularly during the transition period. For example, in the case where you have a provisional patent dated after March 15th, 2012 and you wish to file the utility patent, you may or may not stay under the First to Invent. A single new claim may put you into the First to File. Again, this is new and complicated so please seek legal advice.
Read more on this topic at First to File with a Twist.