For the first time since 1952, and after more than a half-decade of debate, the U.S. patent system is implementing a major overhaul.

At the top of the list of changes wrought by the Leahy-Smith America Invents Act (AIA), which President Obama signed into law last September, are provisions moving away from a “first-to-invent” doctrine toward  a “first to file” patent system.

The U.S. patent system was based on a “first-to-invent” approach, meaning that the inventor who first came up with the invention and then put it into practice was considered the first inventor and was entitled to patent protection.

The patent systems of many other countries are based on “first-to-file,” in which the inventor who is first to file a patent application, regardless of the date of invention receives patent protection. With AIA, the U.S. system will move closer to the approach used in most of the rest of the world.

The first inventor to file provisions take effect with patent applications filed after March 16, 2013. After that date, an inventor who creates the invention first but fails to file the patent application first could lose out.

However, AIA also provides for a grace period that basically gives an inventor (or others who get information from the inventor) to make disclosures ahead of making a patent application, as long as they file the application within a year. This gives the inventor some breathing room — to test the reasonableness of a prototype, to discuss ideas with potential investors and to come up with the money to pay for a full-blown patent application.

A Brookings Institute policy brief says that the new U.S. approach, with its first to file provision tempered by the grace period, creates a kind of hybrid approach between first-to-invent, which favors the inventor, and first-to-file, which favors the filer.

The Brookings brief offers a comprehensive, readable overview of AIA with some suggestions for inventors and companies:

• Be cautious when providing pre-patent-filling disclosures at trade shows or conferences.
• In the future, U.S. patent rights will depend more on relevant disclosures than on internal documents such as lab notebooks.
• The AIA definition of “disclosure” will be clarified over time by case law
• Companies should reevaluate their provisional patent strategy

As always when it comes to U.S. or international patent consideration, engage an attorney experienced in such matters. If you don’t know one, ask your Board or other trusted advisors for referrals.