By: John McDonagh, 2L, Gonzaga University School of Law

Enacted on September 16, 2011, the Leahy-Smith America Invents Act (AIA) revises 35 U.S.C. and is the most significant change in the United States patent system since the Patent Act’s 1952 revision. Most notably, the new law disposes of the traditional “first to invent” approach and adopts the “first to file” approach. Effectively, this change eliminates the traditional grace period that previously provided an inventor with one year to file for patent registration after the invention’s date of conception without risking another inventor successfully filing and qualifying as prior art. This shift to a first to file system will have the largest impact on smaller inventors who lack the resources of larger corporations that can afford the high cost of multiple patent applications.

As enacted, the first to file system eliminates interference proceedings, which the USPTO previously used to determine application priority when near-simultaneous applications were filed for the same patent, and inventors are now required to submit multiple patent applications early-on in the inventing process in order to protect their idea. This creates an exponential increase in the costs affiliated with obtaining a patent, and provides a competitive advantage to large corporations and inventors with sufficient capital to invest in the process. The increased burdens on smaller inventors are further demonstrated by the AIA’s establishment of a Priority Examination option for patent applications, which is offered for an additional fee. A standard application can take years to be selected for review by the USPTO, whereas a Priority Examination application is reviewed within one year of filing. Accordingly, with the first-to-file system, an inventor waiting in the standard application queue risks another inventor filing for the same patent in the Priority Examination fast track and establishing prior art.

The AIA contains a provision that allows the Small Business Administration a year window to report on the resultant hardships and burdens that come with enacting the AIA. Unfortunately, the majority of AIA’s provisions do not go into effect until March 16, 2013, a full six months after the allotted time to report on resultant burdens. The concern arising from this six-month differential is that many attorneys may not counsel their clients on the new laws until after their effective date and after the allotted time to report concerns.

The effects of the AIA on inventors with limited resources are only a portion of the Act’s revisions, and their total effect will become more apparent as the law comes into effect. Accordingly, patent attorneys have a duty to establish immediate familiarity with the new laws and their effects to ensure their clients’ ideas remain protected.

For a comprehensive analysis and breakdown of the Leahy-Smith America Invents Act and its subsequent consequences on the U.S. Patent System, see Hal Wegner’s article: The 2011 Patent Law: Law and Practice – An Analysis of the Leahy Smith America Invents Act.