To summarize, under the AIA, the state of the art against which inventiveness is judged will be expanded geographically (the foreign sale or the foreign originated patent application) and in time (anything prior to your filing date counts and foreign originated applications count even earlier). None of this expansion was required in order to convert the U.S. from first-to-invent to first-to-file. The net effect is that it will be harder to get a U.S. patent than it was before the AIA, because many more things will be included in the state of the art.
Why were these changes made? Perhaps there was an overall desire to weaken the U.S. patent system. Perhaps there was a recognition that about half of U.S. patents are filed by non-U.S. citizens, so that a weakening of the U.S. patent system may actually be beneficial to U.S. interests. Nonetheless, the result will be a U.S. patent system that has been weakened more than was necessary to accommodate the conversion to first to file.
What can an innovator do to reduce the impact of these changes? Absolutely nothing. You can file your patent application more quickly, to hopefully ensure that you are the first to file. However, once you have filed, there is nothing you can do to prevent this expansion of the state of the art against which your patent application will be judged.
Mitchell S. Bigel is a partner at Myers Bigel Sibley & Sajovec, P.A.
This article originally appeared in Law Technology News.
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