The National Portrait Gallery, located in the Old Patent Office Building in Washington, D.C.WIKIMEDIA, AUDEOver the past year there have been a number of articles written about the ever greater importance bestowed by the programmatic and policy endeavors of the US Patent and Trademark Office (USPTO) and the overall US intellectual property ecosystem. In particular, there has been much criticism of the changes imposed by the Leahy-Smith America Invents Act (AIA) passed in September 2011—including a recent opinion article in The Scientist by George Lewis, who argued that the new law “discriminates against academics and small biotechs.” Unfortunately most of the time, the issues presented to the public—and the basis of many of Lewis’s arguments—are either incorrect or missing key pieces of information to explain why the law operates in a particular fashion.
First, the passing of AIA did not result in a “first to file” system, as Lewis and others argue. Rather, the USPTO now adopts a modified “first inventor to file” system, which preserves some of the protocol matters of the former “first to invent” system, including the 1-year filing grace period and the need for the inventor to file the patent application with a fully “reduced to practice” invention—in other words, the proof of concept or a prototype has been developed. Thus, it is not possible for a non-inventor with a disposable income to swoop in and “steal” a patent from a true inventor who may need a little extra time to secure the necessary application funding while they go public with their initial conceptual ...
