Final Rules for Implementing the First-Inventor-to-File Provisions of the America Invents Act


The transition to the first-inventor-to-file (FITF) system occurs on March 16, 2013. To prepare for implementing the change to the FITF system, the United States Patent and Trademark Office (USPTO), on February 14, 2013, published the final rulemaking entitled “Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act” (hereinafter, final rules) in the Federal Register (78 Fed. Reg. 11024).

The change to the FITF system applies to all applications filed on or after

March 16, 2013 that contain or contained at any time (1) a claimed invention that has an effective filing date that is on or after March 16, 2013 or (2) claimed the benefit of a US nonprovisional application or an international application (i.e., under 35 U.S.C. §§ 120, 121, or 365(c)) that contains, or contained at any time, a claimed invention that has an effective filing date that is on or after March 16, 2013.

The final rules cover three major topics: (1) a new timing requirement for submitting a certified copy of foreign priority documents; (2) required statements for applications filed on or after March 16, 2013 claiming priority to, or the benefit of, an application filed before March 16, 2013; and (3) affidavits or declarations of attribution or prior public disclosure. The final rules differ slightly from the proposed rules published on July 26, 2012 as noted below.

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