On March 17th, 2013, there was a monumental shift in how patents will be awarded in the United States. Before March 17th, the US patent system was a first to invent system in which whoever could prove they were the first to conceive any invention was entitled to the patent for the idea. But on March 17th, the US shifted towards a first to file patent system in which the right to a patent is awarded to the first person to file a patent application for an idea in a patent office.

Notably, most foreign countries use a first to file system. In a pure first to file patent system, a successful patentee must not only invent a new, useful and non-obvious man-made concept, but must also win a race of properly drafting and filing a patent application in the foreign patent office that satisfies the patent law requirements of each particular country.

On March 17, 2013, the America Invents Act ("AIA") merged aspects of the old first to invent US patent system and the foreign first to file patent system which is referred to by many as a first inventor to file patent system.

The new AIA provisions implement a patent system which rewards inventors (and/or their owners/assignees) who take speedy but proper steps in securing their patent rights for the "quid pro quo" advancement in technology required by the US Constitution.

So how will this March 17, 2013 AIA affect innovators?

First, it should be understood that a patent is a grant to its owner(s) of the right to exclude others from making, using, selling, offering to sell or importing the claimed invention in the country in which the patent is obtained. People and organizations intent on solving problems in their industry to gain a market advantage and who desire to protect the ideas that preserve that market advantage will be the organizations interested in obtaining the right to exclude others in their industry through the patent system.

For over a year, many organizations have been working with their patent counsel to implement procedures and strategies relating to AIA affected areas of: i) public disclosure of ideas; ii) innovation proposed submissions and review; iii) novelty searches; iv) invention theft mitigation; v) minimization of patent application preparation and filing time; vi) use of provisional versus non-provisional patent application; and vii) employee assignment obligations to optimize the first inventor to file patent system in their industry.

For example, while contemporaneous documentation of conception and reduction to practice of inventions with witnessed inventor lab notebooks or time-stamped computer files was recommended before March 17, 2013, the AIA first inventor to file system makes contemporaneous documentation critical. In particular, for organizations interested only in US patent coverage, documenting disclosures by inventors to others helps preserve the new AIA exception to the first inventor to file system. This new AIA exception does not count the documented disclosures as blocking novelty if made one year or less before the patent application for the idea is filed. However, for organizations interested in global patent protection, the adage of "file early and often" before making any disclosure may be the best strategy.

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