IP Law News: First-to-File System Set to Launch Soon, Are You Ready?

We’re less than two months away from the official launch of “First-to-File” in the United States. From Tom Kohler of law firm Downs Rachlin Martin:

“The America Invents Act or ‘AIA’ was signed into law by President Obama on September 16, 2011. After an eighteen month waiting period, on March 16, 2013, two months from today, the US patent system officially changes to a first to file system. That means applications filed on or after that date will have their validity judged based on the new law with new definitions of effective filing date and prior art.”

For your reference, here’s a roundup of commentary and analysis on First-to-File and what it means for intellectual property rights holders (spoiler alert: you might want to file provisional applications before the March 16 deadline if you can…):

Consider Filing U.S. Patent Applications Before March 16 (Saul Ewing LLP):

“Of most immediate impact, for claimed inventions having an effective filing date on or after March 16, 2013, the patent will now be granted to the inventor who was the first to file his/her patent application, not the one who was the first to invent the claimed subject matter. Subsequent filers will no longer be able to argue that they invented the claimed subject matter earlier and are entitled to the patent instead.” Read on>>

On Your Marks, Get Set…. AIA First-To-File Officially Takes Off On March 16, But The Race To File Patent Applications Has Already Begun (Downs Rachlin Martin PLLC):

“Because, if you know of any inventions now for which you intend to file a patent application, waiting until March 16 could result in the loss of patent rights. Currently the US patent system awards patents to the first inventor based on a provable date of invention. Potentially, that date could be as early as when you first thought of your invention (“conception date”). After the law change, you will be limited to relying on the date you filed your application.” Read on>>

Countdown to the Ides of March (Foley & Lardner LLP):

“If an application is filed on March 15, but an independent third party published the same invention on March 14, the applicant may be able to ‘swear behind’ the publication by establishing an earlier date of invention. If the same application is not filed until March 16, the applicant may not be able to obtain a patent unless one of the limited exceptions under the AIA version of 35 USC § 102(b) can be established.” Read on>>

New Patent Law to Create “First to File” Rule on March 16th (Womble Carlyle Sandridge & Rice, PLLC):

“Between now and March 16th, you should consider any new ideas you may have in the ‘hopper.’ The best strategy may be to file some kind of provisional application to establish an effective filing date that allows us to proceed under the old patent laws. It appears there are this and a few other advantages to applications proceeding under the old laws.” Read on>>

The U.S. First-to-File Patent System Takes Effect March 16, 2013 (Venable LLP):

“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. If just a single claim requires support of subject matter added on or after March 16, 2013, the whole application and any of its progeny (i.e. continuation or divisional) application are subject to first-to-file rules. Thus, great care should be taken when drafting the claims for a continuation-in-part application.” Read on>>

Final Phases of Patent Reform Now Upon Us – Mark March 16, 2013 on Your Calendar and Plan Now (Foley & Lardner LLP):

“Many patent applicants will want to consider filing applications before March 16, 2013 if appropriate to avoid the new law. In some cases, split parallel filings, rather than a single filing, may be a good call. Hence, planning should have started by now… Finally, March 16 is a Saturday so it would be very good to have all the ducks lined up on or before March 15, 2013!” Read on>>

Upcoming Patent Law Changes Will Put Pressure on Patents (Loeb & Loeb LLP):

“The key to preparing for this new patent environment is good preparation and planning. Best practices will include budgeting for a few potential post-grant oppositions, which will hopefully take the place of more expensive patent litigation matters. In addition, in-house patent counsel will need to work more closely with their colleagues who conduct clinical trials to make sure they understand the worldwide picture on potential prior art clinical trials and sales.” Read on>>

Major Patent Law Changes First-to-File Provisions – Effective March 16, 2013 (K&L Gates LLP):

“As a result of the new provisions going into effect, a prior art disclosure cannot be disqualified or antedated by showing that the inventor invented the claimed invention before the effective date of the prior art disclosure of the subject matter (e.g., under the provisions of 37 CFR 1.131). Accordingly, using the date of conception to overcome a reference will no longer be an option. The AIA revisions … also eliminate the current requirement that a prior art activity be a prior public use or sale ‘in this country.’ Therefore, 35 U.S.C. § 102(a) as amended by the AIA expands the prior art available against an application by including a public use or sale in a foreign country.” Read on>>

Let The Race Begin: U.S. Joins The World In Rewarding The First Inventor To File (Perkins Coie):

“The AIA provides a one-year grace period for certain disclosures. An inventor’s disclosure within one year of the inventor’s effective filing date does not constitute prior art under the AIA’s 35 U.S.C. § 102. Such disclosure includes either a disclosure by the inventor or a disclosure by another who obtained the subject matter of the disclosure indirectly or directly from the inventor.” Read on>>

America Invents Act: Preparing for First Inventor to File (“FITF”) Practice Tips (Sterne Kessler):

“Pre-AIA 102 has a smaller prior art universe… Pre-AIA 102 has a broader grace period; the grace period for AIA 102 is a personal grace period for the inventor. AIA 102 has advantageous common ownership/joint research agreement provisions… Applications that have only contained claims subject to AIA 102 will have no recourse to interference proceedings to demonstrate the applicant was the first to invent.” Read on>>

Be Prepared: America Invents Act Will Be Changing in the U.S. from ‘First-to-Invent’ to ‘First-to-File’ System (Pepper Hamilton LLP):

“Notably, the shift to a first-inventor-to-file system means that patent applicants can no longer antedate a prior art reference of another, subject to the limited publication conditioned grace period described below. Particularly, it will no longer be possible for a patent applicant to overcome an earlier filed published application of another by showing earlier inventive activity.” Read on>>

Proposed Rules for Implementing the First-Inventor-to-File Provisions of the America Invents Act (Sterne Kessler):

“In an application entering the US national stage from an international application after compliance with 35 U.S.C. § 371, the claim for priority must be made, and a certified copy of the foreign application filed, within the time limit set forth in the Regulations under the PCT (sixteen months from the filing date of the prior foreign application). Applicants can use the priority document exchange program with the European Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, and the World Intellectual Property Organization in fulfilling the requirement for certified copies of foreign priority documents.” Read on>>

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