Important Changes To U.S. Patent Law: First-To-File

by Pierce Atwood LLP

Portsmouth, NH

The United States will transition to a first-to-file patent system on March 16, 2013. Here are some key points U.S. patent applicants should be aware of.

1. Which patent applications will be governed by the first-to-file laws?

  • Applications that present even a single claim that has an effective filing date of March 16, 2013, or later will be governed by the first-to-file laws. Once such a patent claim is presented, the first-to-file laws will apply, even if that claim is canceled.
  • Applications that claim priority to a patent application that is governed by the first-to-file laws also will be governed by the first-to-file laws. Once such a priority claim is presented, the first-to-file laws will apply, even if that priority claim is deleted.

2. What are some key effects of the first-to-file laws?

  • Evidence of an earlier date of invention cannot be used to "swear behind" or "antedate" a third-party disclosure in applications governed by the first-to-file laws.
  • The pre-first-to-file 12 month grace period has been eliminated and replaced by a more limited “exception” from the definition of prior art.  The exception applies only for disclosures made one year or less before the filing date of a claimed invention by an inventor or one who derived the disclosure from the inventor.
  • Public uses, sales, offers for sale, etc., that take place anywhere in the world may constitute prior art.
  • Published U.S. patent applications and PCT applications that designate the United States will be citable against applications governed by the first-to-file laws as of the earliest priority date associated with the disclosure at issue, rather than only as of the earliest effective U.S. filing date.
  • Applications governed by the first-to-file laws will be subject to the new post-grant review proceedings that third parties can use to challenge validity once the patent is granted.

3. How might first-to-file laws impact patent application filing strategies?

  • For inventions that may be ready for patenting before March 16, 2013, applicants may want to consider filing patent applications by March 15, 2013, to avoid the first-to-file laws.
  • For inventions for which provisional applications have been filed since March 15, 2012, applicants may want to consider filing nonprovisional applications by March 15, 2013, to avoid the first-to-file laws.
  • For nonprovisional applications to be filed on or after March 16, 2013, that have a priority date of March 15, 2013, or earlier (including continuation-in-part applications) that may have any new material beyond that disclosed in the priority application, applicants may want to consider filing parallel applications to segregate patent claims with an earlier effective filing date from those directed to the new material to avoid the first-to-file laws for the earlier subject matter.

4. What can be done to prepare for first-to-file?

  • Streamline internal invention disclosure and patenting processes to facilitate the ability to secure an early effective filing date.
  • Advise in-house patent professionals and inventors of the continued importance of filing patent applications before making any public disclosures, and the new importance of maintaining good records of the details of any public disclosures that are made before a patent application is filed.

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.

© Pierce Atwood LLP | Attorney Advertising

Written by:

Pierce Atwood LLP

Pierce Atwood 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.