The First-to-File Patent System is Coming - Optimize Your System Now

by Winthrop & Weinstine, P.A.

On March 16, 2013, the "first-to-file" provisions of the America Invents Act ("AIA"), will take effect, replacing the current first-to-invent system. Here we provide specific recommendations to optimize protection of your company's patentable concepts under the new rules.

1. File now, while first-to-invent rules are still in effect.
The first-to-file rules are not effective until March 16, 2013. Therefore, for applications having an effective filing date on or before March 15, 2013, the first-to-invent rules still apply. Consider filing patent applications before the transition date, in order to delay the effects of the transition to the new rules. This approach provides several advantages to the applicant:

  • Eliminates the race to patent office
  • Perhaps most importantly, for the applications prosecuted under the current first-to-invent rules, the applicant retains the ability to declare earlier inventorship over cited art. Under the coming first-to-file rules, this will not be possible.

2. Drastically cut cycle time from invention conception to filing patent applications.
When speed becomes most important, consider installing an internal process that allows quick and systematic movement of a potentially inventive conception from the invention disclosure to the actual filing of the patent application. The process should include, at a minimum:

  • Training for all possible creators of patentable subject matter, including how to determine what could be patentable. All too often patentable inventions go unprotected because the creators of the IP did not recognize the potential patentability of the concept. As a result, it is critical that all individuals involved in the creation of potentially patentable subject matter understand broadly what may be protected. This will result in faster identification of potentially patentable conceptions, maximizing the potential value to the company.
  • Training on how to adequately complete Invention Disclosure ("ID") documents. It is now absolutely imperative that the IDs be completed as fully and completely as possible, including alternate embodiments, etc.
  • Incentives for the inventors to actually complete the IDs as fully and as quickly as possible, with the understanding that time is of the essence from conception to completion of the ID. Delay in this step could allow another inventor or entity to beat you to the Patent Office in filing a patent application for the same or similar invention.
  • Establishing a centralized decision person or team, e.g., a multidisciplinary IP Cabinet, to collect the IDs and regularly and frequently review them for filing.
  • Ensuring that patent applications are drafted and filed as quickly as possible.

3. File provisional applications early and often to establish rights and preserve ability to protect the invention in the future.
There will be IDs where it won't be immediately obvious whether the subject invention will be patentable or have commercial value. In these cases, after March 16, 2013, consider quickly filing provisional patent applications to avoid being beaten to the Patent Office by another entity with the same or similar invention.

4. Encourage inventors to create IDs on improvements to existing products and/or processes and to previously disclosed inventions undergoing improvement or refinement through continued research and development.
Under the first-to-file system, the first inventor to file is typically the "winner." This system thus requires, as discussed above, early filing to protect the initially discovered concept. It is very often the case that subsequent research and development provides further inventive breadth and depth to the initially filed application. As a result, it is important to introduce improvements into your review process by creating new IDs, so the improvements can be considered for new filings.  

In doing so, under the new rules, competitors are prevented from winning the race on the improvement. If a competitor files first, even one day earlier than you, it will be the competitor, not you, that is entitled to the patent for that improvement.

Specific Applications Affected by the Change:

  • Currently Pending Applications: First-to-file rules only apply if an application contains, or contained at any point in time, a claimed invention with an effective filing date of March 16, 2013, or later. As a result, applications having a filing date of March 15, 2013, or earlier, continue to be prosecuted under the first-to-invent system.
  • Currently Pending Applications Under Restriction Requirement: We recommend considering filing of any desired divisional applications relating to the identified inventions before March 16, 2013.
  • Currently Pending Provisional Applications: If you filed one or more provisional application on or after March 15, 2012, that are considered candidates for conversion to non-provisional applications, but that require or desire additional subject matter beyond that included in the provisional application, consider converting these to non-provisional patent applications and filing them before March 16, 2013. This allows prosecution under the first-to-invent rules.
  • New Inventions: A disclosure currently in hand should be converted to a patent application, at minimum a provisional application, and filed before March 16, 2013. This allows prosecution under first-to-invent rules.
  • Continuation-in-part applications: CIP applications will be subject to the first-to-file system if the application contains, or contained at any time, any claimed invention having an effective filing date of March 16, 2013, or after. So, if only one claim in the CIP application requires support of the new matter added on or after March 16, 2013, then the entire application and any of its progeny applications (divisionals, continuations, etc.) are also subject to the first-to-file rules. In short: do not contaminate pre-March 16, 2013, claims with post-March 15, 2013, claims requiring new matter support.
  • Continuing Applications: Continuing applications, including divisionals, claiming priority to applications filed before March 16, 2013, should be considered for filing before March 16, 2013, to allow prosecution under the first-to-invent rules.
  • Applications claiming domestic or foreign priority to applications filed before March 16, 2013: U.S. applications filed on or after March 16, 2013, and that claim priority to applications filed before March 16, 2013, will be subject to the first-to-invent rules as long as no claimed invention requires support of subject matter added to the application on or after March 16, 2013. This set of applications includes U.S. national stage applications as well as non-provisionals claiming benefit of a provisional application or a foreign application. Adhering to this recommendation ensures that these applications will be prosecuted under the first-to-invent rules.

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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