Abstract
By the Leahy-Smith America Invents Act (AIA), the U.S. patent system is experiencing the most significant reform since the U.S. Patent Act was enacted some 60 years ago. This article focuses on one aspect of the AIA that has perhaps triggered the biggest debate, namely the conversion under the U.S. Patent laws from a “first-to-invent” system to a “first-inventor-to-file” system. The change to the first-inventor-to file system has broad implications to all entities filing patents in the U.S. Under the new first-inventor-to-file system, the emphasis is now on filing patent applications in the U.S. Patent Office even more quickly than before. Thus, a strategy to file early and often (including using provisional applications) will generally better protect against a later inventor winning the race to the U.S. Patent Office.
About the authors
Ross Spencer Garsson is a shareholder in Greenberg Traurig’s Intellectual Property and Litigation Department and Chair of the Austin Office Intellectual Property Practice Group. He is a registered patent attorney and has counseled high technology clients on issues of patent law for 20 years in a variety of technology areas, including nanotechnology, chemical, semiconductor, and computer technologies. Mr. Garsson can be reached at garssonr@gtlaw.com.
Chinh H. Pham is a shareholder in Greenberg Traurig’s Intellectual Property Department, is Chair of the Firm’s Nanotechnology Practice, and is Co-Chair of the Boston Office Intellectual Property Practice Group. He is a registered patent attorney with particular experience in the strategic creation, implementation, and protection of intellectual property rights for high technology clients. Mr. Pham can be reached at phamc@gtlaw.com.
©2012 by Walter de Gruyter Berlin Boston
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