The implementation of a first to file system in March 2013 promises to be one of the most significant changes brought about by the America Invents Act. This week, the U.S. Patent and Trademark Office unveiled a new proceeding that will serve as an additional safeguard that ensures true inventors gain and maintain their rightful protection under the new framework.

While the AIA reforms are expected to reduce legal costs, improve transparency and bring the U.S. patent system into alignment with its international counterparts, their success largely relies on ensuring that the party who files the first application is indeed the true inventor. As a result, the USPTO has finalized a new rule that will allow parties to appeal patent approval board decisions on the grounds that the first applicant derived ideas from another protected entity.

"This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent," USPTO director David Kappos said. "We're pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."

The Licensing Executive Society has been one of several groups to commend the USPTO on its outreach efforts throughout the AIA implementation period. However, industry experts are still looking for additional guidance on how patent reforms may affect joint research agreements, on-sale bars and other considerations.