America Invents Act: Preparing for First Inventor to File (“FITF”) Practice Tips

Review provisional and foreign applications filed on or after March 16, 2012 -

If there is new subject matter to be added before filing a nonprovisional application, consider if it is advantageous to file the nonprovisional application with the new subject matter (1) before March 16, 2013 and claim priority/benefit or (2) on or after March 16, 2013 and not claim priority/benefit.

Considerations for New Filings -

As March 16, 2013 approaches, consider whether it is more advantageous to (1) file before March 16, 2013 and be subject to pre-AIA 102 or (2) file on or after March 16, 2013 and be subject to AIA 102.

• Pre-AIA 102 has a smaller prior art universe:

- AIA 102 expands the scope of prior art to include public use or sales outside the US.

- Under AIA 102, patents and published patent applications are available as prior art as of their earliest filing date (this includes the foreign filing date).

• Pre-AIA 102 has a broader grace period; the grace period for AIA 102 is a personal grace period for the inventor...

Please see full alert below for more information.

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