The America Invents Act (AIA) is a federal statute that was passed by Congress and signed into law by President Barack Obama on Sept. 16, 2011. Some contend that it was the most significant change to U.S. patent law since the U.S. Patent Act of 1952.

This blog post will discuss the most significant change that was brought by the AIA, namely the shift from a first-to-invent system to a first-inventor-to-file system. My next blog will discuss the development of four new administrative proceedings, which represents the second most significant change brought about by the AIA. The third part of this series will address other significant changes to patent prosecution that were made through the AIA. The fourth post will address the changes to patent litigation that were created by the AIA, and the fifth will address other aspects of the AIA.

 

The Adoption of a First-Inventor-to-File System

The U.S. was the last country to use a first-to-invent system, so the AIA effectively harmonized this aspect of the U.S. patent system with the rest of world. The AIA included an 18-month grace period to implement this change to the U.S. patent system.

Prior to the passage of the AIA, every other country in the world utilized a first-to-file system or a first-inventor-to-file system to resolve disputes when two inventors (or groups of inventors) filed separate patent applications claiming the same invention. Under a first-to-file system, a patent office will automatically give the earlier-filed patent application priority over the later-filed application. The later-filed patent application will be declared invalid.

In other words, if Inventor A filed a patent application directed to a new type of heat-treatment process on Dec. 1, 2014, and Inventor B filed a patent application directed to the same heat-treatment process on Dec. 31, 2014, then Inventor A would be given priority over Inventor B. Inventor A would still have to prove that the heat-treatment process is patentable to be awarded a patent. However, Inventor B’s application would be declared invalid.

Under a first-inventor-to-file system, a patent office will conduct an administrative proceeding to determine whether the inventor who filed the first application was the true inventor of the claimed invention. If the inventor who filed the first application was not a true inventor of the heat-treatment process, then the patent office will declare both applications invalid.

Using this hypothetical in which Inventor A filed a patent application on Dec. 1, 2014, and Inventor B filed a patent application on Dec. 31, 2014, Inventor A would not be given priority over Inventor B automatically. Inventor B would be given the opportunity to prove that Inventor A was not a true inventor of the heat-treatment process. If Inventor B is successful, then both patent applications are invalid.

The reason why Inventor B is given the opportunity to prove that Inventor A is not the true inventor in a first-inventor-to-file system is to prevent Inventor A from deriving (or stealing) the invention from Inventor B.

Notice that under both the first-to-file system and the first-to-invent-system, the patent office always invalidates Inventor B’s patent application. This occurs even when Inventor B is the true inventor of the claimed invention.

Before the passage of the AIA, the U.S. Patent and Trademark Office (USPTO) would conduct “interference” proceedings to award priority to the true inventor in cases in which multiple patent applications (or in some cases, patents) were directed to the same claimed invention. The USPTO would award the priority to the true inventor, even if the true inventor was not the first inventor to file. However, the shifting to this new first-inventor-to-file regime meant that “interference” proceedings had to be phased out and replaced by “derivation” proceedings.

The AIA changed the technical definition of certain types of prior art as a result of the shift from a first-to-invent system to a first-inventor-to-file system and eliminated the ability of an inventor to obtain a statutory invention registration. Statutory invention registrations were similar to patent applications, except that the registrant was not given the offensive rights that patent owners received after a patent was issued.