America Invents Act | Text

America Invents Act | Text

Leahy Smith Law

America Invents Act Text
America Invents Act Text

The America Invents Act is a law that was passed in 2011 and certain parts of it took effect on September 16, 2012 whilst the remainder became effective as of March 16, 2013.  This law represents a subtle but dramatic change in the basis and theory of American Patent Law with regards to various provisions empowered therein.  For example, the effect of prior art on application status as well as the priority rights of product developers and inventors to invention concepts.   Priority of invention is an important concept as the inventor who has priority for an invention is the one or group of inventors who would gain patent title and the effect of any resulting financial boons.  You can study various parts of the full text of the American Invents Act by clicking here: (full-text-america-invents-act).

America Invents Act | First to File

The most profound change in American thinking with regards to patenting is a harmonization with most countries who already have first to file statutes.  In fact Canada, the Phillipines and the United States were

first-inventor-to-file
First Inventor to File

the last holdouts for first-to-invent law who have all changed to first-to-file laws in 1989, 1998 and 2013 respectively.  Under the previous patent law, US inventors were able to delay entry into the patent system and still file – after – but typically within a year of other inventors who had previously filed a US patent application and still obtain rights to a patent.  Of course, the late filing inventor would have to prove that they were the first to conceive the invention also providing sufficient proof of its reduction to practice that this was the case.  The infamous inventor’s notebook, proof of diligent reduction to practice of the invention, filing of a patent application all came into play before AIA.  However, that has all changed: the first-inventor-to-file is now the one who rules the roost.

Prior Art under the (AIA) America Invents Act

Various activities of an inventor or his collaborators can influence his patent rights under AIA..  Several can even bar the patentability of his concepts in the United States of America.  Specifically, under the AIA law there are restrictions as to the use in a public facility or locale, the sale of the item to others and or the publicizing of the invention in printed publication.  If someone else does this then another inventor can not obtain a patent on the invention he or she was hoping to patent.  Additionally, disclosures made in foreign countries including offers for sale and public uses are now considered prior art in the United States and you can rejected on this basis.

AIA Grace Period

Finally, and most importantly, the disclosure of the invention anywhere in the world by another bars the patenting of the invention in the United States.  However, there is a clause built into the law such that those disclosures made by the actual inventor within a time period of a year from the filing date in the United State Patent and Trademark Office are not considered prior art to that inventor.  However, these same disclosures would be considered prior art for other inventors attempting to file and protect similar concepts.  The above one year grace period does not apply to inventors who have not published their concepts.

Different Types of Patents

Different Types of Patents

Patent Types :: General

The United States Patent and Trademark Office grants a temporary monopoly on two basic types of patents: these are namely,

1- UTILITY patents

2- DESIGN patents

3- PLANT patents

4- REISSUE Patents

5- DEFENSIVE PUBLICATION

6- STATUTORY INVENTION REGISTRATION

Finding out which patent type your invention belongs to is an important first step to take in protecting your concepts.  Typically, most people create something in the Utility or Design patent types so that is what we are going to discuss first.

Utility Patent vs Design Patent

The most common type of patent is known as a Utility Patent; however, many people jump full speed into obtaining a utility application without the proper understanding of the risks involved.  Whilst about 40% of patents are issued at some point or other in the prosecution these sometimes don’t have claims broad enough to make it worthdifferent_types_of_patents the while of the utility application.  A Design patent application on the other hand is inherently narrow from the beginning since it directly relates to how the item to which Letters Patent is sought ‘appears,’ rather then its broad conceptual gist of the invention found in a utility application.  Also, it is notoriously easier to obtain a design patent.  Thus, it may be worth your while to try to get a Design patent.  The following is a short review regarding the differences between a design patent and a utility patent.

1- UTILITY PATENT

What is a Utility Patent?

A utility patent application is filed so that you can receive letters patent on a novel article of manufacture, composition of matter, process, machine.  The utility patent would prevent another from making, using or selling the patented item or process up to twenty years from the date of the filing of the application.  The USPTO is almost primarily dedicated to issuing utility patents.

Utility Patent Cost

Depending on the nature and complexity of your invention patents vary widely in cost.  Additionally being located near major metropolitan or suburban areas tends to be higher than less highly sought after locations.  Costs between 3500 on the low end and 8-10k on the high end are common for patents ranging from the simple to the more complex.  This is just introduction pricing not including responses to patent examiner answers, allowance and maintenance fees (fees paid to the USPTO to keep the patent alive once it has been approved).

2- DESIGN PATENT

What is a design patent?

A design patent application is filed to acquire patent rights on a original, novel ornamentation embodied in or as it is applied to an article of manufacture; in other words the appearance of the particular item.  If granted the design patent prevents others from using, manufacturing or selling the design.  Currently, this right grants a patent holder a fifteen year monopoly on the production of the invention.

3- PLANT patents

Believe it or not you can receive a patent on certain types of plants if you can ‘create’ them so to speak.  If you have happened to discover a novel asexual plant then the USPTO will allow a patent thereon.  PlantsAsexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.

4- REISSUE Patents

Reissue patent are a type of patent that are disseminated by the US Patent Office.  The purpose of the reissue patent is to amend substantial errors that are within an already issued patent.  All types of patents including the aforementioned plant, design and utility patents can be the subject of a reissue patent. It should be understood that only the original patent holder can file this type of patent and it will not extend the patent term.

Finally, reissue patents can be issued for the purpose of increasing the scope of the claimed language that covers the metes and bounds of the actual patent property right.  However, in order to do a patent holder must make this request with at most two years from allowance.

5- DEFENSIVE PUBLICATION

A defensive publication is a document that is published by an author, inventor, company on a product, process or apparatus.  The purpose of the disclosure is to prevent another entity from obtaining patent rights on the disclosed ideas.  A complete enabling disclosure including any necessary drawings is disclosed thereby creating a body of prior art stopping others from receiving a patent.