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Strategy for Filing Patent Applications in Light of the Implementation of the First-Inventor-to-File Provisions

Posted by Melissa D. Schwaller | Feb 18, 2013 | 0 Comments

The First-Inventor-to-File Provisions of the America Invents Act, included within new 35 U.S.C. § 102, takes effect on March 16, 2013.   Should applicants file new patent applications before March 16, 2013?

The United States currently operates solely under a first-to-invent system.  Old 35 U.S.C. § 102, which includes first to invent, will apply to new applications filed before March 16, 2013 as well as continuation and divisional applications of the new application (as long as the continuation and divisional applications do not contain a claim that is not supported in a pre-March 16, 2013 filing).

New 35 U.S.C. § 102, which includes First-Inventor-to-File, will apply to applications with an effective filing date on or after March 16, 2013 (including any application that contains a claim with an effective filing date on or after March 16, 2013).

The United States Patent and Trademark Office has published Final Rules and Guidelines regarding the First-Inventor-to-File Provisions.   Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11023 (February 14, 2013); Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059 (February 14, 2013).

The majority of applicants will benefit by filing their new patent applications before March 16, 2013.

Benefits of filing before March 16, 2013

The benefits of filing before March 16, 2013 are primarily to avoid the effects of new 35 U.S.C. § 102.  These benefits include that if a new patent application is filed on or after March 16th, applicants will 1) no longer be able to rely on their date of invention to overcome prior art, 2) any prior art from before filing of the present application can be used to reject the present application (“otherwise available to the public”), 3) the effective filing date will go back to the date of the priority foreign filing (i.e, the grace period will be measured from the foreign priority date), and 4) any use or sale anywhere in the world will be prior art.  If the applicant has already publicly used their invention or offered it for sale outside the U.S., it will be advantageous to file before March 16, 2013.  Prior public use and sale will no longer be limited to “in the U.S.” and U.S. patents and publications will be available as of their foreign priority date if that material was disclosed in the foreign application.  In addition, there will be uncertainty regarding interpretation in courts of the new provisions.

Nonprovisional applications filed on or after March 16, 2013, claiming priority to an application filed before March 16, 2013, will be required to provide a statement that it contains or contained at any time, a claim with an effective filing date on or after March 16, 2013.   The statement must be provided within four months from the actual filing date, four months from entry into the national stage, sixteen months from the filing date of the priority application, or the date that the claim is presented with an effective date of March 16, 2013 or later is presented, whichever is later.

Benefits of filing on or after March 16, 2013

The benefits of filing on or after March 16, 2013 are that the one (1) year grace period for disclosure by an inventor can be used to overcome a prior art disclosure if the inventor's disclosure was before the date of the prior art disclosure (NOTE: keep records of disclosure for this purpose) and 2) the Applicant can rely on common ownership or joint research agreements to overcome a rejection under 35 U.S.C. § 102.

Conclusion

Most applicants are likely better served by filing their new patent applications before March 16, 2013.

Any material on this website does not constitute legal advice and is provided for informational purposes only.  This material is not guaranteed to be current or complete.  This material does not create or constitute an attorney-client relationship. 

About the Author

Melissa D. Schwaller

Partner; Office: Houston

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