For patent seekers and patent attorneys alike, March 16, 2013 will be a momentous date. On that day, the U.S. transitions from its current "first-to-invent" system to a "first-inventor-to-file" (FITF) system. Although the FITF system has been in place in every other country in the world for some time, U.S. companies are rightfully concerned about how best to prosecute patents under the new scheme.
While the new FITF system simplifies the determination of who is entitled to a patent on an invention, the current system offers numerous benefits to applicants for patents. One major benefit for pre-AIA applications is the ability to swear behind a cited reference based on the inception/conception date of the invention claimed in the application. That ability will no longer exist once the AIA provisions take effect. In addition, AIA provisions have expanded the scope of available prior art that can be used to reject patent applications. Thus, certain related art may not be prior art under pre-AIA while being prior art under post-AIA. Another benefit is that pre-AIA applications are not susceptible to an invalidity challenge under the new Post-Grant Review provisions of the AIA. A further benefit is that pre-AIA applications are less susceptible to pre-issuance prior art submissions by third parties, which is liberalized in post-AIA practice.
Any regular, provisional, continuation, continuation-in-part and divisional patent applications filed before March 16, 2013 will be evaluated by the U.S. Patent and Trademark Office (USPTO) under the pre-AIA first-to-invent system. Thus, patent applicants will benefit from pursuing patent protection now for all inventions conceived before March 16, 2013, so as to preserve the first-to-invent advantage.
BEFORE MARCH 16, 2013
Companies and inventors should take full advantage of the current system before the transition to AIA. From now until the FITF provisions become effective, companies and inventors should accelerate their invention development and generation of invention disclosures. They should also proceed quickly to review all existing invention disclosures, make decisions on patent filings and proceed with patent applications on all worthwhile inventions.
Patent review committees should plan to meet frequently to hasten decisions relating to any new or existing invention disclosures. The committee should assess any outstanding invention disclosures for commercial or strategic importance and consider the following actions:
- Proceeding now with patent applications on all important or potentially important core business inventions;
- Proceeding with patent application on inventions in highly competitive technologies (competitors will seek to file patent applications before the AIA transition and their filings could bar your post-AIA filing, even if your date of invention precedes their filing date);
- Proceeding with invention disclosures that would be pursued as continuation-in-part (CIP) patent applications (CIP applications will not obtain the benefit of the related earlier filed application for the purpose of treatment as a pre-AIA filing).
Companies should require both prolific and non-prolific inventors to review their projects and submit new invention disclosures as quickly as possible for review by the corporate patent review committee.
Provisional Patent Applications
Companies should consider the strategic use of provisional applications as the FITF effective date approaches. Provisional applications and their subsequent non-provisional counterparts will have the full complement of pre-AIA benefits. Companies should determine which inventions merit the effort of filing provisional applications, bearing in mind that any provisional application should describe a sufficiently enabled preferred embodiment and include claims and drawings. Embodiments that are non-enabled in a provisional application and subsequently enabled in a related post-AIA non-provisional application will result in the entire application being treated as a post-AIA filing.