America Invents Act
First to File

Antonio Meucci
Inventor of the Telephone

136 South Wisconsin St.
Port Washington, WI 53074
(262) 268-8100

From "First-To-Invent" to “First-To-Invent”

  • Temporal and geographic scope of prior art much wider under New Law

    Geographic Scope of Public Use/On Sale Bar:

            •Old Law: public uses, sales, offers for sale made in United States constitute prior art
            •New Law: public uses, sales, offers for sale, etc. that take place anywhere in the world may qualify as prior art

    Temporal Scope of Patent/Printed Publication:

            •Old Law: Patent/Printed publication is prior art if published more than 1 year prior to filing
            •New Law: patent/printed publication prior art if published 1 day prior to filing

  • Filing date, not invention date, rules the day under New Law

            •Old Law: Inventors able to rely on prior date of conception if date of prior art less than 1 year prior to filing date

            •New Law: Inventors no longer able to rely on a prior date of conception of the invention to overcome prior art

  • Inventor grace period remains the same

    •Inventor’s own prior disclosure will not bar patentability in the US so long as the application is filed within 1 yr of a public disclosure

    •Subject matter obtained as a result of a joint research agreement and commonly owned by applicant unavailable as prior art

  • **This above information regarding implementation of the Leahy-Smith “America Invents Act” is provided by ZPS Group, SC for informational purposes only and does not constitute legal advice, nor can it be inferred therefrom that an attorney-client relationship has been formed. Should you need legal assistance or have questions regarding this letter or other matters, please call our office at 262-268-8100.