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Winter Is Coming: an Upcoming Change in the U.S. Patent System

I am a big fan of the Game of Throne series by George R.R. Martin. In the series, the members of House Stark have a forbidding motto: Winter is Coming. A significant change is coming in the patent world as well, and those not prepared face the risk of being frozen out.

When a patent application is filed, the invention claimed in the application is compared to earlier inventions and activities referred to as “prior art.” The claimed invention must be novel and non-obvious in light of the prior art for a patent to be issued. The United States currently operates under a “first to invent” patent system. Under this system, a patent applicant may be able to rely upon his or her invention date to eliminate some of the prior art. For example, if I invent Widget A in January, someone else invents Widget B in March, and I file my patent application in June, I may be able to rely upon my January invention date to prove that Widget B was not an “earlier invention” and thus should not be asserted as prior art against my application.

On March 16, 2013, the America Invents Act will change the United States patent system from a “first to invent” system to a “first to file” system. An applicant will no longer be allowed to rely on his or her invention date to eliminate prior art under the “first to file” system. Instead, the applicant will rely upon the date the application is filed to determine what constitutes prior art. After the system change, significant delays between inventing and filing a patent application could put the inventor’s rights at risk.

If you have an invention, have kept it confidential for a long time, and are thinking about seeking patent protection, you may wish to consider filing a patent application prior to the March 16, 2013 switchover. If you are an experienced inventor, you may wish to consider filing patent applications more quickly to ensure that you are both the first to invent and the first to file.

The America Invents Act includes other changes to the patent system, many of which have already gone into effect. If you have any questions regarding these or other patent matters, please contact Brian Chellgren, or another patent attorney at Bingham Greenebaum Doll LLP.      

The American Invents Act provides a “grace period” wherein disclosures of an invention made by or derived from the inventor made up to one year before the filing date of the application are not considered prior art.

  • Partner

    Brian is an attorney in the firm's Lexington office, a member of the firm's Business Services Department, and Chair of the Intellectual Property Practice Group. A registered patent attorney with degrees in molecular biology (B.S ...

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