MBHB snippets Alert October 13, 2011: Patent Reform: “First-Inventor-to-File” to Replace the Current “First-to-Invent” System


The Leahy-Smith America Invents Act of 2011 (“AIA”) was signed into law by President Obama on September 16, 2011. The first significant overhaul of the U.S. patent system in nearly 60 years, this new patent reform measure ushers in considerable changes in how companies and individuals may obtain and enforce patents in the United States. This is the third in a series of articles on the AIA. The first articles discussed the fee surcharge implemented on September 26, 2011 and the other changes that have already been implemented; those articles can be accessed here. This article describes the upcoming change to a “first-inventor-to-file” regime. Future articles in the series will address other changes that will take effect in the coming months and years.

One of the most significant effects of the AIA is that the U.S. will convert from a “first-to-invent” system to “first-inventor-to-file” regime. The provisions of the AIA relating to “first-inventor-to-file” are set forth in Section 3. And while these provisions do not take effect until 18 months from the date of enactment, i.e., March 16, 2013, they are worth considering in advance of that date as they may impact your patenting and disclosure strategy in the months leading up to the switch. For example, although the “first-inventor-to-file” provisions of Section 3 go into effect in 2013, the new provisions will only apply to applications (and patents issuing therefrom) that contain (or contained) claims having an “effective filing date” (discussed below) on or after March 16, 2013, meaning that some (or many) post-March 16, 2013 applications and patents will be scrutinized under the first-to-invent rules for many years to come.

Please see full alert below for more information.

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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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