The Fine Print of the Leahy-Smith American Invents Act of 2011 (AIA)

After over 60 years, the Leahy-Smith America Invents Act of 2011 (AIA) has resulted in the first adjustments to the American patent process since 1954. Don’t have time to read the 152-page bill? Just keep these main points in mind when filing:

1. A Need for Speed – On March 16, 2013 the “first to invent” rule will be replaced by the “first to file” rule, and this prevision is expected to send applicants off to the races. It will become critical to not only file quickly but to also provide in-depth information in your application. The initial filing must support every feature of the invention that you plan to claim in the future; so file with care because any mistakes with this step could be detrimental to your application in the long run.

2. Pay to Play – A new expedited application option has been available since September 26, 2011, but it comes with a price tag. While you can happily say goodbye to an average three-year processing time, receiving a completed application within one year will cost an extra $4,800.

3. A 50/50 Chance – Feel like a pending application is detrimental to your interests? Starting on September 16, 2011 the AIA will allow third parties to submit prior art. But submit with caution – if the patent examiner is unconvinced by your argument, you run the risk of actually strengthening the pending application by supplying additional information.

In addition to the provisions of the new act, the AIA mandates a number of studies to review the patent system and guide future provisions. In an effort to develop an equal playing field for all applicants and focus on worldwide consistency, many of the studies investigate financial burdens and challenges with international filing. So while you may just be adjusting to these new provisions, stay alert! Because the AIA hints that there is even more change is to come.

Tell us how your company has transitioned to accommodate the new patent procedures!

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