5 AIA Changes That Affect Johns Hopkins Researchers
New Patent Legislation –
From “First-to-Invent” to ‘First-to-File”
The enactment of AIA will affect how Johns Hopkins researchers disclose inventions. Below are 5 changes that will affect Johns Hopkins inventors as a result of AIA.
- AIA Changes the System of Awarding Patents From a “First-to-Invent” system to a “First-Inventor-to-File” system.
- AIA Changes the Way We Use Provisional Applications.
- AIA Changes the Definition of Prior Art in the U.S.
- AIA Changes How Researchers Interact With Others.
- AIA Creates Two New Administrative Procedures That Enable Third Parties to Challenge the Validity of a Granted Patent.
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1. AIA Changes the System of Awarding Patents From a “First-to-Invent” system to a “First-Inventor-to-File” system.
This is a dramatic change from the status quo. Under the old system, the patent on an invention was awarded to the first person to invent the subject matter. If two inventors invented the same subject matter within 6 months of each other, USPTO instituted a patent interference. A patent interference is an administrative procedure to determine who invented first.
Beginning March 16, 2013, a person who invents first loses out to the second-in-time inventor who wins the race to the USPTO. It will become extremely important to move rapidly from conception of the invention to filing a patent application.
2. AIA Changes the Way We Use Provisional Applications.
Under the old regime, when an invention was disclosed to JHTV, a “cover page provisional” was filed quickly with the USPTO. This provisional application included a very brief description of the invention and any data or publication draft that was available. When a Patent Cooperation Treaty (PCT) was filed 12 months after the original filing date, the USPTO used the date of the provisional application filing as the first or priority filing date.
Beginning March 16, 2013, filing of a cover page provisional application will NOT result in receipt of an early filing date for priority purposes. If a cover page provisional is filed and 12 months later a PCT is filed, the priority or earliest filing date awarded will be the filing date of the PCT application. The first or provisional year will be lost.
Under the new regime, in order to get priority to the earliest or provisional filing date, the disclosure must describe and enable the full scope of the later claimed invention. If filing a provisional application is going to divest a first-in-time inventor of his or her right to get a patent, said provisional application is required to be a complete disclosure of the entire invention.
Starting March 16, 2013, Johns Hopkins researchers must disclose their inventions to our offices as soon as possible, but at least several weeks before a public disclosure, such as a presentation or a publication, is scheduled to be made. Any provisional application that JHTV files on behalf of an inventor must include a complete description of the invention, as well as enable the full scope of the claims in order to get the earliest filing date for the invention.
3. AIA Changes the Definition of Prior Art in the U.S.
Under the old regime, inventors had a one year grace period after a public disclosure to file a patent application describing their invention. Within the one year grace period, the new invention remained patentable to the inventor regardless of who made the public disclosure.
Starting March 16, 2013, the one year grace period only protects disclosures made by or derived from the inventor. Everything else that occurs during the one year grace period will destroy patentability. This change applies to public disclosures (publications or presentations), public use, or sale anywhere in the world. Thus, starting March 16, 2013, acts of an unrelated third party can destroy the patentability of an invention.
4. AIA Changes How Researchers Interact With Others.
Johns Hopkins inventors should consider how the prior art redefinition will impact their relationships with their collaborators. Since first to invent will no longer be the standard, researchers should carefully consider any disclosures (even to collaborators) before they are made. If a collaborator discloses an invention that is not theirs, an inventor must be able to prove that the invention was derived it from his or her work at Johns Hopkins. Therefore, it is important for inventors to keep good records of conversations or meetings with collaborators. Lab notebook habits are even more important than they used to be. Well established researchers who have students performing much of the actual experimental work often don’t keep lab notebooks because they aren’t carrying out the experiments. However, it is important that these researchers create a record of their ideas and activities in case proof of contribution to an invention needs to be established.
5. AIA Creates Two New Administrative Procedures That Enable Third Parties to Challenge the Validity of a Granted Patent.
In the U.S., the law has always been that a granted U.S. patent carries a presumption of validity that can only by challenged in a court of law. Effective September 16, 2012, AIA created two procedures to challenge granted U.S. patents: Post-Grant Review (PGR) and Inter Partes Review (IPR).
PGR allows a person to file a petition seeking review of a patent within 9 months of its grant, and the petition will be granted if the patent contains one or more claims that are likely to be unpatentable on any grounds. When that 9 month window closes or at the end of a PGR, one may petition for an IPR of a patent on a more limited grounds or prior art patents or printed publication, and the petition will be granted if it is likely the challenger would prevail with respect to at least one challenged claim, a higher standard.
With both the PGR and the IPR, the challenged patents are not presumed valid as in a district court. Both PGR and IPR proceedings will be conducted by the Patent Trial and Appeal Board, a new tribunal within the USPTO.
Once the period for filing a PGR has passed or a granted patent has come out of a PGR with patentable claims, the patent carries the traditional presumption of validity in the district court.