First Inventor to File System Dictates Changes in Patent Filing Strategies

One of the most significant provisions of the recently enacted America Invents Act (AIA), the change from a "first to invent" system to a "first inventor to file" system, will go into effect March 16, 2013. Currently, the first inventor of specific subject matter was entitled to a patent on that subject matter. Starting March 16, a later independent inventor could be entitled to the patent if the later inventor files a patent application before the earlier inventor.

The first-inventor-to-file system expands the scope of available prior art substantially for applications examined under first-inventor-to-file system.

  • Under the new sections 102 and 103 of 35 U.S.C., there are no geographic limitations on what constitutes prior art. Previously, an offer for sale, sale, or public use in a foreign country, unlike those in the United States, could not be used as prior art. Only printed publications from outside the United States qualified as prior art.
  • The AIA also expands the scope of available prior art by eliminating the Hilmer doctrine, in which the foreign priority date of a U.S. patent or publication could not be used for determining prior art under section 102(e). New section 102(d) provides that a published application or patent is effective as prior art as of its earliest priority date (including foreign applications).

However, the new section 102(b)(1) provides that a public disclosure within one year of the applicant's filing date will not count as prior art if the disclosure was by the applicant or derived from the applicant.

Further, a patent granted on a first-inventor-to-file application can be challenged through post-grant review ("PGR") in the USPTO. PGR is a new, "EPO opposition-like" proceeding that will enable a third-party petitioner to challenge a granted U.S. patent directly before the USPTO Patent Trial and Appeal Board.

All applications filed on or after March 16, 2013 that include at least one claim with an effective filing date on or after March 16, 2013, will be subject to the new first-inventor-to-file rules, including the expanded prior art provisions and PGR.

In view of the imminent changes noted above, all efforts should be made to file any new applications and continuation-in-part applications before March 16, 2013. Continuation and divisional applications claiming priority to an application filed before March 16, 2013 will be subject to the existing first-to-invent laws, provided the claims are supported by the prior application. Filing new applications and continuation-in-part applications prior to March 16, 2013 will avoid the application of the above-noted expanded prior art and potential PGR proceedings. After March 16, 2013, all patent applications should be filed as soon as possible in order to maximize the potential of being the first inventor to file.