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Consider U.S. patent application portfolio review because of upcoming provisions of America Invents Act (AIA)

February 12, 2013

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (AIA). While several provisions of the AIA are currently in force, others will become effective on March 16, 2013. Significantly, the existing First-to-Invent patent system will change to a First-Inventor-to-File system and the definition of “prior art” will be expanded. These new provisions will apply to any U.S. patent application that presents even a single claim that has an effective filing date of March 16, 2013, or later.

The change to a First-Inventor-to-File system serves to harmonize the patent laws of the United States with those of foreign jurisdictions, including the European Union and China. While this change promotes consistency in a global patent portfolio, it may, in effect, cause a race to the United States Patent and Trademark Office for applicants focused only on U.S. patent protection.

Under AIA, prior art now will include (1) a patent, publication, public use or sale by a person other than the inventor at any time before the effective filing date of the application; (2) a public use or sale outside of the United States; and (3) foreign patent applications, i.e., a U.S. patent application or Patent Cooperation Treaty (PCT) patent application designating the U.S. will be prior art as of its effective filing date in a foreign country.

In view of the AIA provisions, and the uncertainty caused by these changes, we recommend a review of your portfolio of U.S. patent applications, as well as your patent filing and technology development plans, to maximize the potential value of your intellectual property assets. A review will allow you to proactively plan pre-March 16 filings, supplement existing pending applications as needed with new claims or data, and develop a patent filing strategy for best protecting your inventions.

Please contact one of our patent attorneys if you would like to discuss the value of a patent portfolio review or if you have any questions regarding the March 16, 2013, law change.

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