The America Invents Act (AIA), signed into law in September 2011, amended the rules of practice in patent cases to implement the “first-inventor-to-file” provision. The first-inventor-to-file provision, which takes effect March 16, 2013, converts the United States patent system from a “first to invent” system to a first inventor to file system. Under current law, assuming there are no other statutory bars, if a first inventor is diligently working on reducing his invention to practice and thereafter files a patent application, but a second later inventor files a patent application before the first inventor files, the first inventor can “swear behind” the second inventor to show his earlier date of invention, and therefore obtain priority and U.S. patent rights to the invention. The new law changes this scheme such that that instead of measuring the priority of an invention based on its date of invention, priority will now be measured based on the date the first inventor actually files a patent application in the U.S. Patent and Trademark Office (USPTO).This change will also fundamentally alter the role of public “disclosures” in preserving the patentability of an invention. Meaning, the new law, found in new Section 102(a)(1), greatly expands the definition of prior art, making a person entitled to a patent unless “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…”
The first-to-file provision of the AIA reduces the attractiveness of provisional patent applications for Non-American inventors who can now file their priority patent applications in patent offices which provide an accelerated search without losing any rights in the USA. Examples for such patent offices include England, Italy, Luxemburg and Israel. The accelerated search enables applicants to receive information regarding the patentability of their invention(s) and possibility to amend the claims in their patent application accordigly, before the next stages (PCT filing and/or Paris convention filing).
Israel Search Authority
The Israel Patent Office in its announcement of November 2010, declared that an accelerated search report will be provided for a patent application first filed by inventor(s) which intend to later claim a priority date based on the patent application, for example when filing Paris/PCT Convention patent applications. Such patent applications will be examined within a period of about 3 months, so as to allow the inventor to receive a better understanding of the prior art prior of filing the patent application in other countries. As mentioned, the accelerated examination and search results will be beneficial to future decision making regarding the patent next stages. Filing such a request must be accompanied by paying an official fee of about 700 USD and submitting a declaration (signed affidavit) stating the inventor intend to claim priority from the patent application.
European Search Authority
As mentioned, a priority patent application may be filed in a number of European countries, which guarantee receiving a European Search Report within 10-12 month, for example England, Italy or Luxemburg. In such case, the specification and the claims may be amended based on the European Search Report to overcome the raised objections and cited prior art within 12 months from filing. It should be noted, that the filed application must be fully and accurately drafted as the EPO does not allow filing patent applications for search purposes only. In particular, the EPO has introduced some sweeping changes to the European Patent Convention (EPC) that impose serious restrictions on the prosecution of European patent applications. For example, an accelerated search is possible only if the application documents on filing are complete enough for the search report to be drawn up. In addtiion, the changes to the EPC also restrict subject matter that will be searched by the EPO during the initial phases of the prosecution of a European patent application. In particular, the EPO has imposed the following procedural restrictions on searches: only a single independent claim is allowed in each claim category; an incomplete search will be performed if the claims are deemed too broad or unclear; and a partial search will be performed if the claims are deemed to lack unity. Generally, subject matter, which has not been searched, will not be examined.
That said, there are still benefits in filing a US Provisional Patent Application as a priority document. First, the Provisional Patent Application provides a lower initial filing cost. Second, Provisional Applications are not subjected to the USPTO examination, only after a complete application has been filed will examination be initiated. As a result, the inventor benefits from one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting patent applications worldwide.