On Your Marks, Get Set…. AIA First-To-File Officially Takes Off On March 16, But The Race To File Patent Applications Has Already Begun


The America Invents Act or “AIA” was signed into law by President Obama on September 16, 2011.  After an eighteen month waiting period, on March 16, 2013, two months from today, the US patent system officially changes to a first to file system.  That means applications filed on or after that date will have their validity judged based on the new law with new definitions of effective filing date and prior art.*

Why Should You Be Concerned?

Because, if you know of any inventions now for which you intend to file a patent application, waiting until March 16 could result in the loss of patent rights.  Currently the US patent system awards patents to the first inventor based on a provable date of invention.  Potentially, that date could be as early as when you first thought of your invention (“conception date”).   After the law change, you will be limited to relying on the date you filed your application.*

A simple example illustrates the potential impact of this change.  Let’s suppose that you thought of an invention during your summer vacation last August.  If you file a patent application on your invention on March 15 this year, you may be able to prove your date of invention in August to overcome anyone else’s work or publication that occurred between August and March.  But if you wait one more day, to March 16, suddenly you lose those seven months and are limited to relying on your filing date of March 16.  Thus, a publication in December that was not prior art if you filed on March 15, is prior art if you file on March 16.

Why Should You Be Concerned Now?

Because the change is only eight weeks away and you can bet that your patent attorney and everyone else’s patent attorney is going to get very busy as the deadline approaches.  If you wait too long, you might find that your attorney will not be able to guarantee that an application can be prepared before the deadline.

Don’t wait any longer.  The race to the patent office has already begun.

* Of course there are caveats, exceptions and provisos; it wouldn’t be patent law without them. For example, continuation applications may still be treated under the old law.  Also, your own disclosure, less than a year before an actual filing date may not prevent you from obtaining a patent, and may help you overcome another who actually filed before you.  If you are interested in all the details of the changes implemented by the AIA, the USPTO has a lot of information posted on their website, or just ask your patent attorney.

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