Major Patent Law Changes First-to-File Provisions - Effective March 16, 2013

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On Saturday, March 16, 2013, the “first-inventor-to-file” provisions of the Leahy-Smith America Invents Act (“AIA”) go into effect. These provisions replace the current “first-to-invent” system. In addition to various other changes, under the new system, the universe of references and activities which can be used as prior art will expand. For example, certain foreign patent applications and activities occurring in other countries that did not previously constitute prior art will become available as prior art under the new rules.

Now is a good time to start planning for the changes in March by reviewing patent portfolios and invention disclosures. As a hedge against the uncertainty associated with the new provisions, it may be worthwhile to evaluate draft applications and pending provisional applications, and to prioritize invention disclosures so that non-provisional applications can be filed before March 16, 2013, if circumstances warrant.

As a general matter, when evaluating invention disclosures and patent filings in the months leading up to the March 16, 2013 transition date, care should be taken to evaluate the costs and benefits associated with taking action now or proceeding with business as usual. Depending on the nature of a particular invention and knowledge regarding the state of the prior art, the changes under the AIA may be a non-event for some applicants. That said, given that the window to take action is shrinking, it is worthwhile to undertake a review at this time rather than wait until the AIA provisions take effect.

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