Ten Important Facts About AIA and Foreign Filing
Don’t Be Too Late To Translate!
Significant changes to American patent law went into effect under the America Invents Act (AIA). These changes created a surge in US patent applicants in the days leading up to March 16, 2013, the law’s effective date.
Now those applications are approaching their 30-month deadline for PCT National Phase Entry and are poised to create a new surge in foreign filings, peaking on September 15, 2015. This introduces potential risks to applicants who will be seeking to file National Phase Applications around that time. Don’t be too late to translate!
Here are ten things to know about the America Invents Act (AIA) and how you can make sure that your organization’s 2015 applications are translated and filed by their PCT National Phase Deadlines:
FACT #1 – Changes to the AIA were introduced on March 16, 2013.
The Leahy-Smith America Invents Act (AIA) was signed by President Barack Obama on September 16 2011. Most of the law’s major provisions went into effect on March 16, 2013.
FACT #2 – A number of the law’s provisions were viewed by many organizations as unfavorable rule changes.
The AIA’s provisions include a number of substantive changes to US patent law, as well as new procedures for challenging the validity of granted patents before the USPTO. One of the law’s key provisions was to change the US from a “first-to-invent” system to a “first-inventor-to-file” system. Whereas before an inventor’s priority claim could be challenged by another party on the basis of the invention’s timing, under the new system, the first inventor to file for the patent will have priority. This change brings the US system into line with most of the rest of the developed world. Other provisions of the law broadened the scope of prior art used to determine patentability, and developed post-grant opposition procedures.
FACT #3 – An unprecedented number of US priority applications were filed in the run up to the AIA deadline.
The AIA’s changes were regarded by many as introducing less favorable conditions for patent applicants. As a result, in the run up to the March 16, 2013 effective date, there was a surge in the number of US first filings. Applicants rushed to get as many applications as possible on file under the ‘old rules’. This precipitated a corresponding spike in US-originating PCT (Patent Cooperation Treaty) applications 12-months later. In September, the final “aftershock” will arrive as these applications reach their 30-month deadline for National Phase Entry.
FACT #4 – Many of these applications will require translation as they come due for National Phase Entry.
The Patent Cooperation Treaty (PCT) is the most widely utilized route for obtaining international patent protection by innovation-driven organizations worldwide. A PCT application establishes a single filing date for determining priority in each of the 148 countries that are party to the treaty. The spike in US first filings leading up to March 16, 2013, means that an unusually large number of US-originating applications share the same priority date.
FACT #5 – The 30-month anniversary of the AIA’s effective date is approaching.
The 30 months following the March 2013 deadline, applications that were subsequently filed as PCT applications will be approaching their deadline for PCT National Phase Entry all at once in most regions; however, some allow filing within 31 months.
FACT #6 – A foreign filing “aftershock” is expected as a consequence of the March 2013 spike in US first filings.
The historically large number of US applications with the same priority dates means that a historically large number of applications share the same deadline for PCT National Phase entry. The result is a foreign filing “aftershock”. This is defined as a surge in applications due for National Phase Entry on or around September 15, 2015. In the days leading up to September 15, 2015, more than 9,000 US-originating applications will be coming due.
FACT #7 – The global supply of qualified patent translation resources is limited.
The result of the AIA aftershock is that applicants face a risk that there won’t be enough legal translators in the world to deal with such a large spike in applications requiring translation at the same time. Qualified patent translators are a high-value and limited resource. They are specialized professionals with advanced linguistic, technical and patent-specific expertise. The risk is that the global supply of these resources is insufficient to absorb such a dramatic short-term spike in demand.
FACT #8 – Translation quality is at risk if left too close to the deadline.
Depending on how prepared they are for a sudden spike in demand, many legal language service companies will face challenging business decisions in order to cope with the strain on their resources. One possibility, as alluded to above, is that they will be forced to simply refuse new orders due to lack of capacity. Another, perhaps more troubling source of risk for applicants is that providers may relax quality standards, sourcing highly technical material to increasingly under-qualified translators as they struggle to keep up with demand. The pressure on translation providers may mean that the quality of translations will suffer as a result, introducing the risk of serious complications during prosecution and potentially compromising enforcement viability post-grant.
FACT #9 – Resources available may come at a considerably higher cost.
A short-term strain on available legal specialists and linguistic resources may significantly drive up the costs for those applicants that leave translation too close to the deadline.
FACT #10 – Don’t be too late to translate.
Applicants can eliminate the risk of missing deadlines, sacrificing translation quality, and incurring higher costs by taking action now. Make your filing decisions and get any required translations started as soon as possible—and well before September 15, 2015.
Park IP Translation’s goal is to ensure that the best resources are available to all of our clients at normal pricing. That is why we are proactively engaging our clients and sharing the information that we have gathered about the pending impact. Working as a partner, we are working with our clients on developing a strategy for managing this risk.
To minimize risk don’t be too late to translate. Be proactive: contact Park IP today to talk about your foreign filing requirements for 2015, and get ahead of the AIA Aftershock.
For additional information, check out our Managing Risk from the AIA Foreign Filing Aftershock Webinar.