As you may be aware, the America Invents Act of 2011 (AIA) will soon bring significant change to U.S. patent law. Notably, any patent application filed on or after March 16, 2013, will be subject to the new First-to-File system.1 In contrast, any patent application filed prior to March 16, 2013, will still be subject to the old First-to-Invent system.
Why Is It Beneficial for a Patent Application to Be Filed Under the Old First-to-Invent System?
Any patent application filed on or after March 16, 2013, will no longer be able to swear-behind, and thereby remove, a cited reference based on a prior date of invention. This means that even though the underlying technology was conceived prior to the filing date, the patent application will be limited to the filing date as the earliest date of priority. Indeed, references that are published after the date of invention, but prior to the date of filing, may be used as prior art to such a patent application. Said differently, under the new First-to-Invent system, an inventor may not swearbehind the date of a reference to remove it as prior art, even if the date of invention predates that of the reference. This can significantly reduce the value of a patent application, since the date of invention often occurs months (or years) before filing.
Further, a number of new patentability standards come into effect under the new First-to-File system that may also have an adverse effect on patent applications filed on or after March 16, 2013. Notably, there is no geographic limitation to what is considered prior art to a patent application, as even references published in a foreign country (and a foreign language) will be considered prior art if they predate the filing date of the patent application.2 Additionally, patent applications filed on or after March 16, 2013 may be filed within one year of a public disclosure by the inventor(s) only, thereby removing the one-year grace period available under the old First-to-Invent system for any public disclosure by a third party.3
It is important to note that any nonprovisional patent application filed on or after March 16, 2013, that claims priority to, or is converted from, a provisional patent application with a filing date prior to March 16, 2013, will be subject to the new First-to-File system if the nonprovisional patent application includes any claims directed to new subject matter (i.e., subject matter not supported by the original disclosure).4 As such, it is best to proceed under the assumption that any change from the provisional application will cause the nonprovisional application to be treated under the new First-to-File system.
Recommended Practices Prior to March 16, 2013
Considering some of the adverse changes that affect rights associated with patent applications filed on or after March 16, 2013, we recommend considering the filing of any patent applications prior to March 16, 2013. In particular, we recommend considering any pending invention disclosures for filing as a patent application and proceeding with the conversion of any pending provisional applications, as well as the filing of any continuation-in-part or international (PCT) applications with new subject matter prior to March 16, 2013. Therefore, we recommend filing any nonprovisional and PCT applications directed to:
- Outstanding Invention Disclosures
- Pending and Unconverted Provisional Applications
- New Subject Matter for a Pending Nonprovisional Application
Further, the United States Patent and Trademark Office and law firms are expecting a flood of patent application filings in the days and weeks leading up to March 16, 2013. As such, we further recommend determining your filing needs as soon as possible to ensure that your patent counsel is able to handle the filing prior to enactment of the new First-to-File system.
Recommended Practices Under the New First-to-File System
After March 16, 2013, with the change to a First-to-File system, it becomes advantageous to proceed with filing any patent applications as soon as possible to obtain the earliest possible priority date. For example, it may be beneficial to expeditiously file nonprovisional applications or provisional applications with sufficient disclosure to support a claim in a later-filed nonprovisional application to important invention disclosures. In addition, you should be mindful of the fact that the scope of available prior art is expanding. As such, we recommend some of the following key actions for our clients:
- Implement expedited patent committee decisions on key invention disclosures.
- Plan for provisional application filings for any invention disclosures that are facing questionable or slow patent committee decisions.
- File provisional applications early and often (and not just “cover-sheet” provisionals).
- Closely monitor any planned public disclosures or offers for sale.
USPTO Fee Changes
In addition to the change to the First-to-File system, it is also important to note for budgeting that the United States Patent and Trademark Office recently issued final rules that will soon put into effect changes in a number of patent fees. A majority of these fee changes will take effect on March 19, 2013, and will generally result in an increase in fees.5 Some notable fee changes include:6
Click here to see table.