The race to the Patent Office begins March 16, 2013, when the new first-to-file patent system takes effect. Start your engines, or at least think about the consequences of this system for current and future patent portfolios. Before March 16, actions can be taken to maintain the ability to choose the system to be applied—the rules of the original first-to-invent system, or the rules of the first-to-file system. 

Potential early losers under the new first-to-file rules are pending provisional applications with inadequate support for later-filed nonprovisional claims. Such later-filed claims are then subject to first-to-file rules, which alter what is considered as prior art, defenses to rejections in view of prior art, and who may be issued the patent. Without the ability to rely on the provisional application’s filing date, an application filed by another entity may be deemed the first filed, and the race is lost. A careful review of all pending provisional patent applications is recommended so that an applicant can make the best the decision about which rules will apply to the nonprovisional application.

For inventions not yet filed for, or new embodiments or improvements to inventions, filing an application before the Race begins is a strategy to maintain a patent portfolio under the first-to-invent rules long after March 16. This pre-March 16 application can be a provisional or a nonprovisional patent application, but it must provide sufficient written description and enablement of the inventions so that later claims are maintained under the first-to-invent rules.

The strategy to remain under the first-to-invent rules may be beneficial for technologies in crowded art areas; in instances where past disclosures or actions may present problems; in situations in which companies, universities, or other entities are competing closely with each other for improvements; or for the general reason of having a choice of patent rules systems for years to come. A review of all new inventions, embodiments, and improvements is recommended so that the effects of the new rules are carefully considered before March 16.

Addressing these strategic questions and weighing the pros and cons of each patent system as it relates to individual patent applications requires consideration of both these issues and the intentions by inventors or owners for the patent applications. The patent professionals at Ballard Spahr can assist in making these decisions for inventions currently pending in applications, and for completed inventions for which an application has not yet been filed.