Are You Ready for the ‘First-to-File’ Patent Change? It’s Just 5 Days Away…

[Link: What the First-to-File Patent Change Means (And What IP Strategists Should Do About It)]

On March 16, 2013, the long-awaited “first-to-file” provisions of the America Invents Act go into effect. For your convenience, here’s a JD Supra roundup of most recent commentary and analysis on the historic change:

Does The Experimental Use Exception Survive The AIA? (Foley & Lardner LLP):

“Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal Register Notices publishing the final First Inventor To File rules and Examination Guidelines. Comment 12 of the Guidelines, which relates to experimental use, caught my attention.” Read on>>

USPTO Finalizes “First Inventor to File” Rules (Loeb & Loeb LLP):

“The ‘first inventor to file’ provision at the heart of the AIA brings the U.S. patent system in line with those of foreign counterparts and eliminates the ‘first to invent’ regime – the hallmark of U.S. patent practice. Prior to the passage of the AIA, the United States was the only country with a patent office using a ‘first to invent’ regime.” Read on >>

Patent Filing Considerations Under the AIA on the Eve of March 16th (Sterne, Kessler, Goldstein & Fox P.L.L.C.):

“… with a few exceptions, the amendments in AIA section 3 will take effect on March 16, 2013, and shall apply to any application (or patent issuing thereon), that contains or contained at any time (A) a claim to an invention that has an effective filing date that is on or after March 16, 2013; or (B) to any continuation, divisional or continuation-in-part application of any patent or application that contains or contained at any time such a claim. In other words, ‘new’ AIA section 102 applies for examination of applications that include at least one claim having an effective filing date on or after March 16, 2013. Once an application falls under AIA section 102 it always remains under AIA 102. Moreover, any progeny of an application subject to AIA section 102 will be subject to AIA section 102.” Read on>>

Maximizing the Effect of Patent Applications as Prior Art Under the AIA (Foley & Lardner LLP):

“But, this does not mean that stakeholders should wait to file their patent applications until March 16, 2013 in order to maximize their prior art effect. This is because the effective date provisions of the AIA govern which applications will be examined under the new First-Inventor-To-File laws, not which applications can be cited as prior art under § 102(a)(2) and § 102(d) of the AIA.” Read on>>

USPTO Publishes Final Guidelines for New America Invents Act (Baldwins):

“The final rules make it clear that where an inventor has disclosed their invention, and subsequently filed a patent application within 12 months of that disclosure, any third party disclosure of the same invention which occurs after that of the inventor will not form part of the patentability assessment (that is, will not be considered ‘prior art’) – even if that disclosure is in a different form to that made by the inventor.” Read on>>

Consider Taking These Actions Before March 16, 2013, The Effective Date of New U.S. Patent Laws (Schnader Harrison Segal & Lewis LLP):

“[G]oing forward, research-and-development entities should re-evaluate internal policies and procedures for pursuing patent protection. In view of the importance of being the first inventor to file a patent application in the Patent Office, existing policies may need to be amended to adopt a ‘file early, file often’ approach.” Read on>>

Final Rules for Implementing the First-Inventor-to-File Provisions of the America Invents Act (Sterne, Kessler, Goldstein & Fox P.L.L.C.):

“If you have a provisional or foreign application pending and need to add subject matter when filing a nonprovisional application, consider filing the nonprovisional application before March 16, 2013 so that the nonprovisional application is not subject to the FITF system and the requirements of the final rules. Similarly, if you have a continuation-in-part application (CIP) to file, consider filing the CIP application before March 16, 2013. However, in certain circumstances, the FITF system may provide benefits due to its broader ‘commonly owned’ and CREATE Act provisions.” Read on>>

America Invents Act: USPTO Publishes Final Examination Guidelines for the First-Inventor-to-File Provisions (Morrison & Foerster LLP):

“[T]he USPTO has interpreted the ‘or otherwise available to the public’ residual clause of AIA 35 U.S.C. § 102(a)(1) as indicating that the statute does not cover non-public sales or non-public offers for sale. Thus, a non-public commercial sale or non-public offer for sale of an invention does not qualify as prior art for the purposes of AIA 35 U.S.C. § 102(a)(1). For example, a sale among individuals who have an obligation of confidentiality to the inventor is non-public, and therefore the sale would not preclude patentability under the on-sale bar. Conversely, a sale among individuals who do not have an obligation of confidentiality to the inventor is public, and the on-sale bar would apply.” Read on>>

A First Look at the Final First Inventor to File Rules (Foley & Lardner LLP):

“… under the final rules, if a transition application contains (or ever contained) a claim with an effective filing date on or after March 16, 2013, a statement to that effect must be submitted within the later of four months from the actual filing date of the application at issue (or four months from entry into the U.S. national stage), or 16 months from the filing date of the earlier-filed application. The final rules also provide that such a statement is not required unless warranted by information ‘already known’ to individuals governed by Rule 56—that is, applicants are ‘not required to conduct any additional investigation or analysis to determine the effective filing date of the claims.’” Read on>>

Take a Proactive Approach to Patents in View of Patent Reform (Davis Brown Law Firm):

“What do these changes mean for companies seeking patents? First, it may be advantageous to file applications prior to the March 16 change in order to have the benefits of the first to invent system. It may also be a good idea to use provisional patent applications to hedge your bets. Provisional patent applications have few formal requirements, are relatively inexpensive, and give you a year to make a decision about patent protection. You may want to work with a patent attorney to develop a patent strategy tailored to your company’s specific needs.” Read on>>

First Inventor to File System Dictates Changes in Patent Filing Strategies (Reed Smith):

“Continuation and divisional applications claiming priority to an application filed before March 16, 2013 will be subject to the existing first-to-invent laws, provided the claims are supported by the prior application. Filing new applications and continuation-in-part applications prior to March 16, 2013 will avoid the application of the above-noted expanded prior art and potential PGR proceedings. After March 16, 2013, all patent applications should be filed as soon as possible in order to maximize the potential of being the first inventor to file.” Read on>>

From “First to Invent” to “First Inventor to File” (Winthrop & Weinstine, P.A.)

“Whether a patent is granted on a patent application largely hinges on whether the claimed invention has been disclosed already in a publicly available reference, or whether it would be obvious to one of ordinary skill in the art to have modified a disclosed method or product in a known way to reach the claimed invention. Additionally, one can no longer ‘swear back’ to their invention date; if the Examiner cited a reference with a filing date that was earlier than your filing date, but your invention date was earlier than their filing date, you could file an affidavit attesting to your invention date and effectively remove the applicability of the cited reference.” Read on>>

The America Invents Act: All Grown Up in 2013 (Buchalter Nemer)

“Almost all patent fees collected by the United States Patent & Trademark Office (USPTO) have now increased by 15 percent. The fee increase applies to fees for both patent applications and issued patents, such as maintenance fees. An application can be ‘prioritized’ by the USPTO by paying a flat fee of $4800 in addition to other ordinary fees. Finally, a $400 fee will be applied to those matters that are not filed electronically with the USPTO.” Read on>>

USPTO Issues First-Inventor-to-File Examination Guidelines and Final Rule (McDonnell Boehnen Hulbert & Berghoff LLP):

“Where a U.S. patent or U.S. patent application publication has a prior art effect as of the filing date of a foreign priority application, a certified copy of the foreign application or an interim copy of the foreign application must be filed within the later of four months from the actual filing date of the application filed under 35 U.S.C. 111(a) or sixteen months from the filing date of the prior foreign application. Under some circumstances, the above requirement will not apply — e.g., the foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement.” Read on>>

United States switches from first-to-invent to first-inventor-to-file system in 2013 (Baldwins):

“With these changes IP security becomes increasingly important. Unintentional or malicious disclosures could result in loss of patentability, or rights being awarded to another party. However, a new form of proceeding, termed a ‘derivation proceeding’, is available to original inventors with substantial evidence that a third party’s patent application has been derived from their own invention without their consent. Maintaining internal documentation and records of invention are again vital, and policies for employee education, data storage and security, and debriefing of outgoing employees will also be important.” Read on>>

Preparing for the Final Phase of the America Invents Act Going Into Effect March 16, 2013 (McDonnell Boehnen Hulbert & Berghoff LLP):

“After March 16, 2013, you may also want to give serious consideration in some situations to filing two parallel applications, with one application claiming no more than what is expressly supported by a pre-March 16, 2013 application (or a provisional application filed on or after March 16, 2013), and the second application claiming any additional subject matter.” Read on>>

Important Patent Law Changes (Jackson Walker):

“Under current law, only certain publications and foreign patent applications written in English prior to the date of your invention are prior art preventing you from obtaining a U.S. patent. After March 15, almost any publication or sale or disclosure available to the public anywhere in the world prior to the date of your patent application may prevent you from obtaining a U.S. patent.” Read on>>

The First-to-File Patent System is Coming – Optimize Your System Now (Winthrop & Weinstine, P.A.):

“Continuation-in-part applications … will be subject to the first-to-file system if the application contains, or contained at any time, any claimed invention having an effective filing date of March 16, 2013, or after. So, if only one claim in the CIP application requires support of the new matter added on or after March 16, 2013, then the entire application and any of its progeny applications (divisionals, continuations, etc.) are also subject to the first-to-file rules. In short: do not contaminate pre-March 16, 2013, claims with post-March 15, 2013, claims requiring new matter support.” Read on>>

Also watch:

[Link: Prior Art Challenges After First-Inventor-to-File – Sterne, Kessler, Goldstein & Fox P.L.L.C.]

Find additional First-to-File updates at JD Supra Law News>>