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USPTO To Implement First-To-File System

February 8, 2013

 

On March 16, 2013, certain important aspects of the recently enacted America Invents Act ("AIA") will take effect.  Among these is the move from the current First-To-Invent system to a First-To-File system.  Traditionally, the U.S. has awarded a patent to the first applicant to invent a particular invention.  As between two inventors who were claiming rights to the same invention, this determination was not always easy, and sometimes led to complex and expensive evaluations concerning conception, reduction to practice, and diligence.  Under the First-To-File system, the rights to a patent for a particular invention will be awarded to the first inventor to file a patent application for the invention, regardless of when the actual invention was made.

Another important aspect of the AIA is that the scope of prior art is broadened.  For example, under the current law, the prior use or sale of an invention is considered prior art only if the activity occurred in the United States.  However, under the new law, the prior use or sale of an invention abroad is also considered prior art.  In addition, foreign patent applications become prior art as of the application filing date rather than the publication date.

In view of the change to the First-To-File system, it will be very important to move quickly to protect new inventions.  For example, once an invention has been made, a thorough written disclosure of the invention should be created, including a full set of drawings, if appropriate.  As always, CPH will work quickly with the inventors to flesh out the inventive concepts during the patent application preparation process.

Some of our clients have already implemented systems to accelerate the documenting of inventions and the patent application process.  For those that have not, we suggest that you develop such a program.  To that end, please feel free to contact us to discuss the development of an effective program.

Our Recommendations

1.         For inventions made before March 16, 2013, we recommend that an initial application (e.g., a U.S. provisional or non-provisional application) be prepared and filed on or before March 15, 2013.  A subsequent application (e.g., a non-provisional application, or a continuation or divisional application) claiming priority to the initial application can then be filed within a year  and  be examined under the old First-To-Invent system, provided that all of the claims are fully supported by the initial application.  Examination under the First-To-Invent system has several advantages, including the ability to "swear behind" some prior art references.

2.         If an initial application has already been filed, a subsequent application filed on or after March 16, 2013 that claims priority to the initial application will be examined under the First-To-Invent system only if all of the claims are fully supported by the initial application.  If there is matter to be added to the initial application, we recommend either filing one subsequent application on or before March 15, 2013 containing the new matter, or filing two applications  after March 15, 2013, one that includes the new matter, and one that does not include the new matter.  In the latter scenario, the application that does not include the new matter will be examined under the First-to-Invent system and the application that does include the new matter will be examined under the First-to-File system.

3.         For inventions made on or after March 16, 2012, consideration should be given to filing an early provisional application  that has a disclosure  sufficient to support meaningful claims.  If improvements to the invention are made within a year, one or more additional provisional applications may be warranted to obtain an early filing date for the improvements.  A non-provisional application filed within a year of the earliest filed provisional application will then be entitled to the benefit of the earlier filing dates of the provisional applications, provided that the claims in the non-provisional application are fully supported by the one or more provisional applications. 

We would be happy to discuss the new laws and their implications to you and your inventors and work with you to develop systems and procedures to best take advantage of the new laws.