The AIA And Its Impact On The Independent Inventor

By Michael Foycik


The Leahy-Smith America Invents Act, AIA for short, proposes sweeping changes to the U.S. Patent legal system and to the U.S. Patent Office itself. The “first to file” provision is of the greatest importance to independent inventors. Most of the other changes are, more or less, administrative in nature, and will be covered in future articles. This article takes a brief look at the issues affecting the independent inventor, and especially the “first to file“ provision of the AIA.

Simply put, the “first to file” law would mean whoever is first to file a patent application will be deemed the true inventor. Sounds simple, but the law also provides for a possible “derivation proceeding” which would have a very limited scope.

What does this mean for the independent inventor? For one thing, it means even the best confidentiality agreements and NDAs (non-disclosure agreements) will have questionable value. It will be difficult, and very costly, to contest inventorship under the AIA. How costly? It depends, but even now the costs of contesting inventorship may be out of reach of most independent inventors; under the AIA, far greater hurdles will exist, and the cost will be higher.

Under the AIA, independent inventors would be well advised to first file a patent application (provisional or utility, either will suffice) before showing the invention to anyone.

This is already my recommendation to inventors: file a patent application first! Do this before you show it. Do not trust in agreements or contracts to protect your rights. Too costly, you say? Not true! A provisional patent application is very cost effective, gives substantial rights, and the government filing fee is relatively low. And, if you can’t afford the government filing fee, there are even some work-around solutions for that, which I may write about in a future article.

Under the current law, any two conflicting patent applications can, in theory, be placed into an “interference proceeding” to determine which inventor should have the rights of both conflicting applications. Those proceedings are expensive, and fairly rare. Even so, the existence of such interference proceedings has one beneficial effect: it discourages “ripping off” (e.g., misappropriation) of inventions. Such “interference” proceedings will be a thing of the past under the AIA.

Here are a few other important changes made by the AIA: A corporate employer won’t need the inventor’s signature for patent applications, if the inventor is unwilling. Prior commercial use is a defense to infringement claims. Third parties will have an easier time submitting prior art against pending patent applications. Business method patents will still exist, but cannot include tax-avoidance strategies as the patentable feature. The “best mode” requirement cannot be used as a defense in court. “Virtual marking” is now permitted to give notice of patent rights and patent status online.

You can visit my web site for more original patent articles and trademark articles, or my web site for articles and information about lawsuits and litigation relating to patents, trade secrets, and trademarks.