Intellectual Property

The America Invents Act: Whoever Files First Wins Big

The electric motor, light bulb and sliced bread - Americans love to invent things. There's even a popular TV show where entrepreneurs and inventors compete for investment money for their ideas.

Federal patent laws have been protecting inventions like these since 1790. And for the first time in 60 years, those laws may get a major facelift.

The America Invents Act

In September 2011, President Obama signed the America Invents Act (AIA) into law. It took some time, and there was a lot of debate, but the Senate passed the AIA in March 2011, while the House passed its version of the law later that June. The AIA makes sweeping changes to the way the US patent process works.

The goals of the AIA are to boost the American economy, increase and foster American ingenuity and protect and create American jobs. Here are some of the ways it hopes to do these things:

First-To-File Wins the Patent

Since the dawn of patents in the US, the rule has always been the first-to-invent something was entitled to the patent for it. The AIA changes that basic rule to the first-to-file a patent application with the US Patent & Trade Office (USPTO) wins the day.

This change is designed to simplify the application process and speed-up the USPTO's decision-making process. This leads to less "patent-pending" time. That means items can hit the market while they're still useful, and it creates jobs to meet consumer demand for the newly patented items.

Critics claim, however, there will be "races to the patent office" and an increased backlog of patent applications.

Patent Challenges

The AIA lets patent examiners look at more information and materials during the decision-making process to help them make sure only high quality patents are granted. The law also creates a first window challenge process. Here, during the first nine months after a patent is granted, it can be challenged by other inventors and businesses.

The idea is to weed out patents that shouldn't have been granted because, for instance, they infringe or illegally copy another patent.


Like any legal matter, there are fees involved with patents. The AIA:

  • Lets the USPTO set its own fee schedule
  • Requires the USPTO to lower fees by 50 to 75 percent for some filers
  • Lets the USPTO keep any amount it collects in fees that's over its budget. Today, any excess amount has to be turned over to the US Treasury

It's hoped these new fee provisions will give inventors and businesses an incentive to file patent applications. At the same time, the rules are intended to give the USPTO the funding it needs to hire and pay more patent examiners to reduce the current backlog and move quickly on new applications.

What It Means for You

Your patent application certainly will be impacted by the AIA. It may take some time for the USPTO to get up to speed with new fees, processes and many other mechanics involved with putting the AIA into action. But, with the new first-to-file rule, it's probably best that you and your attorney act quickly and file your application.

Scam Alert!

Also, keep in mind that new laws and rules like the AIA often bring out the scam artists. Patent scams aren't new. For years, unscrupulous businesses and individuals have bilked money out of inventors for help with filing and getting patents and "marketing" them to consumers and business.

Scammers will almost certainly take advantage of the AIA, especially the first-to-file rule, to get would-be-inventors to "act now before it's too late." Not all offers for help are scams; you can get legitimate help:

  • Make sure you carefully research any offer before you pay for any services to make sure it's legit. Check with the USPTO and Federal Trade Commission (FTC)
  • Carefully read any contract or document you're asked to sign. Talk to an attorney if you have any questions
  • Know how to spot a scam by knowing what questions to ask a business or individual offering to help you with an invention

Inventing can be exciting and exhausting, but the law is there to help and protect you. Time will tell if the AIA makes things better or worse for you and your fellow inventors.

Questions for Your Attorney

  • How much will you charge me to file my patent application?
  • Can any attorney help me with a patent, or do I need a specialist?
  • Can you help me get a refund from a patent marketing company I paid to help with my patent?
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