By Timothy Le Duc and Roy P. Zachariah of Akerman Senterfitt
With the recent presidential signing of the “America Invents Act,” (hereinafter "the Act") U.S. patent law will eventually see its biggest change in over 50 years. The full impact of the Act will not be realized for months, if not years, as the Patent Office implements several changes and creates the new procedures that it has been tasked with by Congress.
Of the changes to be enacted, what patent decision-makers should be aware of in the near term is that the Act is transitioning the U.S. patent system from a first-to-invent to a first-to-file system. Although some commentators have characterized the change as anti-small business and favoring big corporations with patent departments, in reality, it should not be difficult for big and small companies alike to adapt.
The first-to-file system will likely increase the amount of provisional patent applications filed, especially for what are deemed high-priority inventions. As an alternative to being nudged into filing what may seem as an extraneous provisional application, the Act provides the option for inventors to publicly disclose an invention - with the date of public disclosure acting as a priority placeholder for up to one year. However, publicly disclosing one’s invention prior to filing a corresponding patent application has drawbacks, such as barring potential foreign patent protection in certain countries.
Worth noting is that the Act faile...