AIA – First Inventor to File

On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act, known as the AIA, into law. The purpose of this act was to modernize the United States patent system, and as a result several provisions have been implemented that change the way patents are regulated. On March 16, 2013, the eighteen-month anniversary of the signing of the act, the third and most prominent phase of implementations went into effect. Consequently, The United States now operates under a First Inventor to File (FITF) system, a major change from the previous First to Invent system. Up until March 16, 2013, U.S. law focused on who first conceived of an invention, rather than who filed the patent application itself. Under the AIA, the new focus shifts to whether a “first filer” obtained, or could have obtained, the invention from a “later filer.”  Most researchers are familiar with a need to document their conception dates and keep appropriately witnessed notebooks. This requirement was not eliminated in the AIA, but expanded.

At the same time, this change does include some provisions which allow another applicant that files a patent for the same invention to show that the first filer derived the invention from his disclosure. The second filer must request a “Derivation Proceeding” within a specified period and support his allegations with “substantial evidence.” In September 2012, the USPTO issued guidance on what is considered substantial evidence. A Derivation Proceeding petitioner must show that he had an earlier conception date and that he communicated his idea with the other party. The USPTO requires that the petitioner corroborate the earlier conception date and include at least one corroborated affidavit addressing the communication of the invention to the other party.

Patent protection can be compromised if the invention is previously disclosed to the public in almost any manner. This includes both written documents but importantly also includes oral presentations. In some cases, even departmental meetings and student presentations can count as ‘public’ if anyone from outside Emory could be in attendance. An “enabling” description of your invention at such a meeting could potentially render your invention “available to the public” and invalidate future patent rights.  While the AIA retains a one year grace period for the inventor’s own disclosures, if another person publishes a variant of the invention during that one year period, even if an obvious variant, then the intervening publication is not protected and could invalidate a later filed patent application.  If you or anyone in your lab intends to present a new technology at any meeting, please contact our office with an overview of what is going to be presented so we can help guide you on this issue.

It is critical to contact Emory’s OTT prior to publishing any data connected to your invention. Patent protection can be compromised if publications such as manuscripts, conference abstracts, or meeting posters are shared with outside audiences prior to disclosing and protecting the technology.