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...

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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