Matters that Require Attention under the AIA

Disclose and file with care

• File patent applications as early as possible (this tip applies both before and after AIA).
• Develop procedeures to file provisional applications rapidly when needed.
• Be careful not to spur the competition into filling or publishing by disclosing enough information to give away your development plans or progress even if you do not disclose the invention.
• Note that the one year grace period does not apply to publications by others.
• Strategic publications designed to prevent competitors from obtaining a patent are more important under the AIA because of the more limited grace period.
• Preserve, witness, and sigm laboratory notebooks as before for possible use in derivation proceedings.

Dodge derivation problems

• The scope of the one-year grace period under the AIA's first-inventor-to-file scheme is much narrower than under the old laws, so inventors must take extra care to safeguard proprietary subject matter until a patent application is filed in the United States.
• Maintaining records of inventions, such as laboratory notebooks, is still important despite the first-inventor-to-file provisions of the AIA. These records could be important evidence in derivation proceedings.
• Derivation proceedings before the USPTO or in civil court offer only limited protection because of narrow time frame for filling.

Because of the narrow grace period under first-inventor-to-firl provisions and the limited protection of derivation proceedings, monitoring the activities of both collaborators and competitors is even more important under the AIA than it was under the pre-AIA patent laws.

Reference- 'How to avoid filing catastrophes under the America Invents Act', Jeremy Cubert and Eric Silverman