Under the first-to-file provisions of the Leahy-Smith America Invents Act, any patent application filed after March 16, 2013, containing even one claim with a priority date of March 16 or later, will now fall under the first-to-file rules. As commentators have noted, however, this shift from a first-to-invent system to a first-to-file system is more complex than the designations alone imply.
A determination of who is the first-to-file in the United States will depend on the interplay between the filing dates and any pre-filing disclosures about the invention, that is, the United States will recognize a “grace period” for disclosures made before the patent application is filed. A downside to this practice is that a number of international jurisdictions do not recognize such grace periods. In practical effect, inventors who do not promptly seek patent protection face an increased risk that a later inventor will hold the U.S. patent rights. Thus, some expect that more provisional applications will be filed with the U.S. Patent and Trademark Office (USPTO) as an efficient way to secure an early priority date.
In addition, USPTO’s new fee schedule took effect on March 19. While some fees have increased, a number of those applicable to small or micro entities are reduced.
Meanwhile, USPTO issued a final rule on March 14 to add missing text to its “First Inventor to File Final Rule” pertaining to “claims for priority to a foreign application in an application filed under the Patent Cooperation Treaty.” This correction also took effect on March 16. See Forbes, March 11, 2013; Federal Register, March 14, 2013.