Implications of the new patent bill (America Invents Act)

On September 8, 2011, the Senate passed the Leahy-Smith America Invents acts (AIA), which was signed by President Obama on September 16, 2011. The AIA has created significant changes to the US patent system. The most significant changes affecting independent inventors, small businesses and start-ups will be effective in 2012 and March 2013. Some of these include:


Priority is determined by the first to file a patent, not the first to invent the inventive concept or technology. This means that acting quickly to file a patent application can be vital to the granting of a patent, especially in competitive areas where many are developing innovations simultaneously. Inventors must reduce the invention to practice as soon as possible to ensure timely filing. It is also advisable to file patent applications early to establish a prior art and effective filing date.

Filing date

Prior art is determined based on the filing date, not the invention date. An inventor can no longer file affidavits to antedate cited prior art. Filing a provisional patent as soon as the technology is reduced to practice may be a strategy for many inventors in order to address this significant procedural change.

Foreign sales and public use

The new patent law no longer excludes foreign sales and public use in determining statutory bars. It is now more important than ever to keep technology confidential and non-public until a patent application is filed. Notably, the one-year grace period still applies if the inventor or a direct assignee publicly discloses the invention and later files a patent application.