The first-to-file provisions of the Leahy-Smith America Invents Act (AIA) took effect on March 16, 2013. The predominant view among patent practitioners is that applicants should in general keep their pre-AIA patent application under the first-in-invent regime to avail the benefit of the Hilmer doctrine and the flexibility of being able to swearing behind the earliest filing date. However, in certain scenarios, applicants may need to deliberately enter the first-to-file regime in order to maximize the value of their pre-AIA application.

Why entering the first-to-file regime

Consider the following fact pattern:

1. Scientist invented a novel nanomaterial and published her work on October 1, 2008.
2. Intrigued by the publication, Company agreed to fund Scientist’s subsequent research in exchange for IP rights. After Scientist obtained an improved nanomaterial, Company filed a Japanese provisional application on January 1, 2009.
3. Company filed a US regular application a year later on January 1, 2010, claiming priority to the Japanese provisional application.

Under §102(b) of pre-AIA patent law, the October 1, 2008 publication is a statutory bar prior art against the US regular application, which has an effective filing date of January 1, 2010. As a result, Company might have serious trouble overcoming the prior art disclosure of the base invention, before they can obtain a patent directed to the improved nanomaterial.

In sharp contrast, under §100(i)(1)(B) of the AIA, the US regular application has an effective filing date of January 1, 2009 with the Japanese priority accounted. Thus, the October 1, 2008 publication, a disclosure made by the inventor within a year before the effective filing date, would be disqualified from prior art under §102(b)(1)(A). With the October 1, 2008 publication directed to the base invention out of the picture, Company is suddenly in a much better position to obtain a patent directed to the improved nanomaterial.

Section 3(n) of the AIA concerns whether a patent application filed on or after March 16, 2013 is examined under the first-to-file regime or the first-to-invent regime.

Except as otherwise provided in this section, the amendments [to 35 USC §§ 102, 103, etc.]…shall apply to any application for patent…that contains or contained at any time—(A) a claim to a claimed invention that has an effective filing date…that is on or after [March 16, 2013]….

Accordingly, to deliberately enter the first-to-file regime, applicants can file a Continuation-In-Part application claiming benefit to their pre-AIA application while adding a new claim unsupported by the pre-AIA application. The new claim, sometimes referred to by practitioners as the “poison pill,” will bring the entire Continuation-In-Part application under the first-to file regime and allow applicants to enjoy its advantages in the fact pattern described above.

Therefore, although applicants are generally advised to keep their pre-AIA applications under the first-to-invent regime, in certain scenarios they should actively consider invoking the first-to-file regime to maximize the value of their pre-AIA application.

*Emily Liu is a summer associate with Foley & Lardner.

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