Alert: “First-Inventor-To-File” System Becomes Effective March 16, 2013

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March 7, 2013

As you may be aware, the U.S. patent system will undergo a significant change effective March 16, 2013, changing from a “first-to-invent” system to a “first-inventor-to-file” system. Here are answers to frequently asked questions concerning the new system that U.S. patent applicants need to be aware of.

What are some key effects of the first-to-file laws?

  • Applications governed by the first-to-file laws will not be able to use evidence of an earlier date of invention to "swear behind" or "antedate" a third-party disclosure.
  • Public uses, sales, offers for sale, etc., that take place anywhere in the world may constitute prior art.
  • Published U.S. patent applications and PCT applications that designate the United States will be citable against applications governed by the first-to-file laws as of the earliest priority date associated with the disclosure at issue, rather than only as of the earliest effective U.S. filing date.
  • Applications governed by the first-to-file laws will subject to the new post-grant review proceedings that third parties can use to challenge calidity once the patent is granted.

Which patent applications will be governed by the first-to-file laws?

  • Applications that present even a single claim that has an effective filing date of March 16, 2013, or later will be governed by the first-to-file laws. Once such a patent claim is presented, the first-to-file laws will apply, even if that claim is canceled.
  • Applications that claim priority to a patent application that is governed by the first-to-file laws also will be governed by the first-to-file laws. Once such a priority claim is presented, the first-to-file laws will apply, even if that priority claim is deleted.

How will this impact patent application filing strategies?

  • For inventions that may be ready for patenting before March 16, 2013, applicants may want to consider filing patent applications by March 15, 2013, to avoid the first-to-file laws.
  • For provisional applications filed subsequent to March 15, 2012, applicants may want to consider filing nonprovisional applications by March 15, 2013 to avoid the first-to-file laws.
  • For nonprovisional applications to be filed on or after March 16, 2013, that have a priority date of March 15, 2013 or earlier (including continuation-in-part applications) that may have any new material beyond that disclosed in the priority application, applicants may want to consider filing parallel applications to segregate patent claims with an earlier effective filing date from those directed to the new material to avoid the first-to-file laws for the earlier subject matter.

What should we do to prepare for first-to-file?

  • Streamline internal invention disclosures and patenting processes to facilitate your ability to secure an early effective filing date.
  • Advise in-house managers and inventors of the continued importance of filing patent applications before making any public disclosures, and the new importance of maintaining good records of the details of any public disclosures that are made before a patent application is filed.

We are advising clients to file applications prior to March 15, 2013 in order to reduce the uncertainty associated with such a significant change.

If you are considering filing a patent application, we strongly encourage you to file by March 15, 2013 and are ready to provide assistance as needed.  Please note that the longer you wait, the greater the risk of not being able to complete a filing by March 15. 

For more information, please contact your Briggs and Morgan attorney or a member of our Intellectual Property practice group.