15 March 2013Patents

Rush of patent filings ahead of AIA change

US attorneys have been working flat out to manage a surge in patent filings ahead of Saturday’s shift to a first-to-file system.

The new system, a central provision of the America Invents Act, which was signed in September 2011, replaces the first-to-invent setup and brings the US much more into line with countries in Europe and Asia.

Lawyers say today may see the highest number of US patents filed in the history of the US Patent and Trademark Office, as businesses uncertain of the changes ahead seek to take advantage of the current rules.

Barry Schindler, shareholder at Greenberg Traurig LLP, said his practice has handled 600 applications this week, including some from Israel, Greece and Japan, many of which are rushed and could encounter problems in the future.

This trend may be replicated under the new system, said Ralph Loren, partner at Edwards Wildman LLP, with companies filing more and more provisional applications that may incomplete.

But US patent owners have had a chance to study the AIA for more than 18 months and have experience filing in Europe and Asia, meaning they won’t be too concerned about the changes, the lawyers said.

“Patent owners will be more sensitive but multinationals have always dealt with it,” Schindler said.

He noted that one of the more problematic areas to deal with will be prior art, which will have a wider scope under the new system, meaning a wider range of sources could be used to object to a patent application.

Most of the AIA’s changes have already kicked in but, alongside the new first-to-file system, there will be new opposition proceedings and a one-year grace period, in which an inventor has one year to file an application for an invention after disclosing it.

Dr Maureen Kinsler, partner at Marks & Clerk LLP, said the first-to-file system provides more certainty for patent applicants, and removes the need for businesses to keep track of when inventions are first made.

“This removes a significant practical burden,” she said.

Loren added that while there may be some uncertainty in the short term for patent owners, the law will require amending in the future and it will be interesting to see how it “plays out the long run”.

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