The Race to the Patent Office – The Impact of the America Invents Act

James T. HaglerSenior Patent Counsel

Qualcomm Incorporated

America Invents Act

• US Patent System transitioned from First-To-Invent to First-To-File System on March 16, 2013.

• Filing an application before March 16, 2013 created potential value because it decreases the pool of prior art available to the Examiner.

America Invents ActFirst-to-Invent (FTI) to First-Inventor-to-File (FITF) Transition

• Effective Date – March 16, 2013– “shall apply to any application for patent, and to any

patent issuing thereon, that contains or contained at any time … a claim to a claimed invention that has an effective filing date … that is on or after the effective date described in this paragraph [March 16, 2013]”

• Benefits Lost under FITF(1) Open to new, previously unconsidered, class of prior art(2) Can’t swear behind any reference(3) One-year grace period limited to applicant’s own disclosure of invention

New Class of Prior Art Previously Not Considered by USPTO

12 months

Foreign application filedUS application filed claiming priority to Foreign application

Application filed

Potentially 12 months prior art now considered that wasn’t under FTI

Application publishes

6 mo

Not Prior Art under previous FTI

Prior art as of filingdate under AIA

5

New Class of Prior Art Previously Not Considered by USPTO

6 mo12 months

Foreign application not in English language filed

PCT application designating US but not in English filed

PCT application published

Application filed

Potentially 18 months prior art now considered that wasn’t under FTI

Prior art as of filingdate under AIA

Not Prior Art under previous FTI

6

New Class of Prior Art Previously Not Considered by USPTO

12 mo18 months

PCT application publishes not in English language

PCT application designating US but not in English filed

US National Phase entered w/ English translation

Application filed

Potentially 30 months prior art now considered that wasn’t under FTI

Prior art as of filingdate under AIA

Not Prior Art under previous FTI

New Class of Prior Art Previously Not Considered by USPTO

18 mo12 months

Foreign application not in English language filed

PCT application designating US but not in English filed

US National Phase entered w/ English translation

Application filedPotentially 30 months prior art now considered that wasn’t under FTI

Prior art as of filingdate under AIA

Not Prior Art under previous FTI

AIA Prosecution Strategy• Accelerate selected cases to ensure that they were filed

before March 16, 2013 and are examined under first-to-invent system.

• Tightly manage prosecution timeline of cases, advance from invention disclosure to filing quickly

Start of the Race

• Compressed Prosecution Timeline– Shortened timeline for Patent Review Board disposition for a submitted IDF– Concurrent Search and Drafting– Shortened window for patent attorney to prepare draft application– Shortened window for inventor to review and attorney to finalize

application

Head Start on the Race

Mar

chQ

1, Ja

n., F

eb.

Q3/

Q4

Est.

March surpassed annual totals though

FY07

Q1/Q2 surpassed

annual totals

USPTO New Filings

Results of the RaceReduction of Backlogged Cases

12

Pre-AIA filing push reduced backlog in Q2

AIA Acceleration Impact– Avg. time to filing reduced 44%

• Time to PRB disposition - reduced 38 days• Disposition to draft received - reduced 63 days (concurrent PFS)• Review - reduced 23 days