Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part I

by Foley & Lardner LLP

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.

How to enter the first-to-file regime

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.

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.

© Foley & Lardner LLP | Attorney Advertising

Written by:

Foley & Lardner LLP

Foley & Lardner 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.