From “First to Invent” to “First to File”

The America Invents Act (AIA) was signed into law on September 16, 2011. The AIA includes numerous significant changes to U.S. patent law intended to insure the quality of patents issued by the U.S. Patent and Trademark Office (USPTO) and to better harmonize U.S. patent law with patent laws in other countries. Some changes to the law became effective upon enactment of the AIA, but other changes were postponed until later dates. One of the most significant changes—one that has an immediate and direct impact on patent filing decisions—occurs on March 16, 2013.

On March 16, 2013, U.S. patent law will transition from a “first to invent” patent system to a “first to file” patent system. The current “first to invent” system is intended to award patents to the first person to invent a claimed invention—even if a later inventor beats the first inventor to the patent office. The incoming “first to file” system, however, will generally award priority to the first inventor to file an application for an invention—even if that person happens to be the later inventor.

Why Should an Applicant Rush to File Before March 16, 2013?

Any patent applications filed before March 16, 2013 will still be examined by the USPTO under the current “first to invent” system. Applications filed on or after March 16, 2013, however, will be subject to the “first to file” system. There are several important advantages to filing under the current “first to invent” system:

The Ability to Overcome “Prior Art” Based on an Earlier Date of Invention

Patentability is determined relative to the “prior art.” Prior art generally consists of information that is already known by the public (e.g., prior patents or publications, commercial products, etc.). An applicant who files before March 16, 2013 will still be allowed, in certain circumstances, to overcome a publication or commercial sale taking place on, for example, October 1, 2012 if the applicant can establish that the invention was conceived before October 1, 2012. An applicant who files on or after March 16, 2013, however, will not be entitled to rely on the same evidence.

A Narrower Definition of “Prior Art”

Applications filed after March 16, 2013 will be subject to a broader definition of “prior art” and, therefore, a more difficult standard for patentability. First, prior art currently includes information that is “known or used by others” before an invention is conceived. As of March 16, 2013, prior art will include any information that is “otherwise available to the public” before the filing date. Second, prior art currently includes only public uses or sales that have occurred within the U.S. As of March 16, 2013, prior art will include public uses or sales anywhere in the world. Third, prior U.S. patents and published applications currently constitute prior art as of the earliest filing date within the U.S. As of March 16, 2013, these same patents and published applications will constitute prior art as of the earliest effective filing date anywhere in the world.

Fewer Grounds on Which to Challenge the Patent

The AIA instituted a new “post-grant” review process making it easier for competitors and other interested parties to challenge issued patents. This process only applies to patents issuing from applications filed on or after March 16, 2013.

Lower Fees

On March 19, 2013, a significant revision in fees goes into effect at the USPTO. The basic fees paid to the USPTO by most applicants for filing, searching and examining the application will increase from the current $1260 to $1600.

Because of the potential advantages to filing under the “first to invent” system, applicants should consider filing any invention that is ready for patenting prior to March 16, 2013 (circumstances may exist where filing after March 16, 2013 is more advantageous, but these are expected to be rare and should be discussed with an attorney). Therefore, if you are contemplating filing for patent protection on an invention, you should strongly consider initiating the filing process immediately. Preparation and filing of an application typically will take at least several weeks and there is likely to be a significant increase in filings immediately prior to the deadline.

How Should Patent Filing Strategies Change After March 16, 2013?

After March 16, 2013, patent applicants will need to consider changes to their existing procedures to maximize the opportunity to secure patent protection under the “first to file” system. In particular, patent applicants should take the following steps:

File as Early as Possible

Under the “first to invent” system, the first person to invent could delay filing and still be awarded a patent over a later inventor who happens to file first. The “first to file” system, however, may yield the opposite result. Therefore, it will be important to file as early as possible once an invention is ready for patenting. Similarly, any preliminary steps to filing an application such as documenting an invention, patentability searches, and preparing and reviewing the application should be prioritized appropriately to insure the earliest possible filing.

Consider Filing Provisional Applications As the Invention is Developed

Applicants should consider filing a provisional application as early as possible after conception of an invention even if the invention is not yet fully developed or tested. Further, applicants should consider filing multiple provisional applications as the invention is further developed in order to establish one or more filing dates while development of the invention continues.

To learn more about this important change to U.S. patent law, please contact any of the Intellectual Property lawyers listed to the left or your Dykema relationship attorney. 

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