Consider Filing U.S. Patent Applications Before March 16

by Saul Ewing Arnstein & Lehr LLP


MARCH 16, 2013 is the effective date for major changes made to the U.S. Patent Act by the America Invents Act (“AIA”). These changes should motivate inventors to consider filing their patent applications before the changes take effect. Our specific recommendations are at the end of this Alert.

First to File

Of most immediate impact, for claimed inventions having an effective filing date on or after March 16, 2013, the patent will now be granted to the inventor who was the first to file his/her patent application, not the one who was the first to invent the claimed subject matter. Subsequent filers will no longer be able to argue that they invented the claimed subject matter earlier and are entitled to the patent instead. The only exception is when the later applicant can show that the earlier applicant derived the invention from him/her. Particularly for inventors who may have been sitting on patentable inventions in fields where others are active, time is fast running out to file and retain priority before the new law takes effect.

No Protection from Recent Prior Art

Further, for claimed inventions having an effective filing date on or after March 16, 2013, an inventor can no longer use his or her earlier invention date to overcome prior art by others that became available one year or less before the effective filing date. Inventors must now show that they (or others who obtained the subject matter directly or indirectly from them) publicly disclosed the subject matter earlier than the recent prior art. If the recent prior art is a prior U.S. patent or application by others, and cannot be shown to be commonly owned, the inventor’s public disclosure must have been before the effective filing date of the prior art patent or application. As a result, the benefit of a one-year grace period is all but eliminated, a distressing result for some inventors (although those who routinely file for patents in foreign countries have already learned to work with similar rules).

Broadening of Prior Art

Probably of most impact in the long run, however, is that the AIA greatly expanded the scope of prior art under 35 U.S.C. § 102. First, in addition to public disclosure through patenting, describing in a printed publication, public use, and on sale, prior art now includes “otherwise making the claimed invention available to the public.” This means that an oral presentation can now be cited as prior art. Second, public use and public knowledge are no longer limited to the United States. For example, a presentation anywhere in the world now becomes prior art. Third, Patent Cooperation Treaty (“PCT”) applications designating the United States do not have to be published in English to be effective as prior art. Untranslated PCT applications published in Japanese, for example, nonetheless become prior art as of their PCT filing dates. And, finally, U.S. patents or applications deemed published under Section 122(b) (which includes PCT applications designating the United States) that claim a foreign priority date are effective as references as of their foreign filing date. So, a PCT application designating the United States that is published in Japanese is now effective as prior art as of its Japanese filing date.

Reverse Midas Touch for Mixed-Date Claims

As an added twist, if the application at any time includes a claim with an effective filing date on or after March 16, 2013, or claims priority to such an application, the application as a whole becomes subject to 35 U.S.C. § 102 as effective on March 16, 2013 – even if that particular claim is later cancelled. And, if the application contains a mixture of claims (some having effective filing dates before March 16, 2013 and some on or after), then not only do all claims become subject to the new Section 102 as effective on March 16, 2013, but all claims are also subject to Section 102(g) [prior invention by another in the U.S.], Section 135 [interference proceedings to determine first to invent in the U.S. Patent Office], and Section 291 [civil action in court to determine the first to invent] as effective on March 15, 2013. That means that the post-March 15, 2013 claims can also be rejected because of prior invention by another, or be subject to an adverse finding of prior invention by another, while not being entitled to a pre-March 16 invention date.

What Does This Mean to Applicants?

  • If you filed a provisional application any time after March 15, 2012, and were planning to file a non-provisional (regular U.S. or PCT) application with added subject matter and/or claims within a year of that filing, you should file the non-provisional before March 16, 2013.
  • If you have a new disclosure that you are planning to file as a patent application in the next few months, you should file the application before March 16, 2013.
  • If possible, avoid filing a continuation or continuation-in-part of any application filed before March 16, 2013 if it includes/claims new subject matter, or includes new claims vulnerable to arguments of new matter. In short, do not mix pre-March 16, 2013 and post-March 15, 2013 claims.
  • Consider filing any continuation applications you are contemplating before March 16, 2013.
  • If you have applications subject to restriction requirements, consider filing all divisional applications before March 16, 2013.

Should you have any questions about the information in this Alert, please do not hesitate to contact the author.

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.

© Saul Ewing Arnstein & Lehr LLP | Attorney Advertising

Written by:

Saul Ewing Arnstein & Lehr LLP

Saul Ewing Arnstein & Lehr LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.