Are You Ready for First-to-File Patent Priority?

by Miller & Martin PLLC

Patent attorneys are expecting a flurry of patent filing activity by March 15, 2013.  This is because under the American Invents Act, U.S. Patent Laws will change on March 16, 2013 and the U.S. will convert to a first-to-file patent system, similar to the rest of the world, instead of the present first-to-invent system.  Under the existing first-to-invent regime, where two inventors have invented the same thing, priority belongs to the inventor establishing the earliest date of invention or conception of the invention.  When the law changes on March 16, when two inventors have invented the same thing, the U.S. Patent will belong to the inventor that wins the race to file in the Patent Office.
By filing a patent application before March 16, 2013, an inventor can rely upon his invention date to establish priority against other inventors. From March 16 forward,  priority will be fixed by the filing date of the application regardless of how much earlier in time the invention may have been made.  Thus while it has always been advisable to file patent applications as early as reasonably possible, it could be imperative to file some applications for existing inventions before the March 16, 2013, change in the law.  Also, from March 16 forward, it will be more important than ever to file patent applications with dispatch.
Apart from the earlier priority that can be obtained by filing patent applications by March 15, 2013, applications filed before the law changes are subject to a smaller body of prior art that can be used by examiners to reject the application.  Under current law, disclosures made within the year before the filing of the patent application are not available as statutory prior art under Section 102(b) of the Patent Laws.  From March 16, 2013, forward, any publication dated before the filing date of the application can be cited by the examiner.  Prior art will also be expanded by including patent filings originating abroad based upon their earlier foreign filing dates, and matter in public use, or on sale, or otherwise available to the public in foreign country will be prior art, just as if it had occurred in the U.S. under the current law.  A corollary to the patent examiners’ ability to rely upon an expanded body of prior art during the patent prosecution process, is that the same range of prior art becomes available to competitors seeking to challenge the validity of patents filed after March 15.
Finally, many patent office fees will increase effective March 19, 2013 by between about 10%-30% so that filing by March 15, will also avoid the additional government application fees.
In view of these changes, in most cases it is preferable to file patent applications for existing inventions by March 15, 2013, so that the current law governs examination, invention priority, and the prior art available to examiners.  Where possible, development on pending inventions should be completed and applications filed by March 15, 2013.  There may also be advantages to converting existing provisional applications to non-provisional applications, or to filing continuation-in-part applications with additional disclosures, by the March 15 deadline. 
As always, if you have any questions concerning this or other developments involving patent or other intellectual property law issues, please contact Charles Forlidas, Steve Stark or Doug Johnson.

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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