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Posts Tagged ‘prior art’

The Prior Art Expansion Under the AIA

by Orlando Lopez

The patent reform introduced by the America Invents Act (AIA) constitutes the most radical set of changes in the US patent law since probably the first US patent code.  No longer is the date of invention important — the important date now is the effective filing date.  This change introduces a game-changing race to the patent office where the first to file wins.  The change in the US patent law also expands the references that can be used to prevent obtaining a patent, the so-called “prior art.”  This expansion in the prior art and the race to the patent office would also require a change in the IP protection strategy.  Although this is not a phrase that should be used in an election year, the response can be characterized as “FILE EARLY AND OFTEN.”

The expansion of the definition in the prior art can be seen by comparing section 102 of the patent code as it exists today,  to that which will be in effect after March 16, 2013, when the last part of the AIA comes into effect.  The expansion in the prior art can be described as having two components.  First, we can no longer swear back.  Swearing back was a process by which you would get rid of one reference by an affidavit that proves that you had invented before the effective date of the reference.  The other characteristic of the prior art on the AIA is globalization. We all know that, according to Tom Friedman, the world is flat and now the world of a US patent code is also flat.  Comparing section 102 of the code between now and after the AIA is fully implemented, the differences are:

1)  While presently you cannot obtain a patent if the claimed invention was known or used by others in this country, there are no territorial limitations in the AIA.  You cannot obtain a patent if the invention was in public use, on sale or otherwise available to the public anywhere in the world.

2)  While presently those acts have to happen before the invention by the applicant, a patent in the AIA is precluded if the claimed invention was in public use, on sale or otherwise available to the public before the effective filing date. Read the rest of this entry »

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