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

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