Possible Effects of the America Invents Act and Recent Court Decisions

The America Invents Act and recent court decisions promise to change many aspects of the patenting process. For example, as the United States Patent Office progresses from a first-to-invent system to a first-to-file system, businesses and inventors should reconsider how and when they share information about their inventions and the timing for filing patent applications. Furthermore, because of changes in the rules for third party participation in the patent prosecution and new opportunities for patent-opposition challenges, businesses and inventors should reconsider their processes for monitoring patent activity of their potential competitors. Additionally, changes in the best mode requirement may provide opportunities to obtain patent protection without disclosing all the information currently required. These and other issues will be discussed from the view point of a registered patent agent with particular focus on materials science and chemistry related technologies.