IP Update: Act Now to Avoid Disappointment at the “First-to-File” Patent Office

“The first-to-file system has the advantage of simplicity. It is difficult to prove when a person first mentally conceived of an invention, but it is easy to prove the date on which a patent application was filed. This enhanced simplicity, however, comes at a cost: instead of rewarding the earliest inventor, it rewards the inventor who wins the race to the patent office.” (Bradley Arant Boult Cummings)

On March 16, 2013, eighteen months after the America Invents Act was signed into law, the United States will transition from a “first-to-invent” to a “first-to-file” patent system.

That’s not good news, writes Otis Littlefield at law firm Morrison & Foerster:

“It will be harder to get U.S. patents on inventions from patent applications under the new first-to-file system. The new first-to-file system expands the range of disclosures that can be prior art, which can prevent you from patenting an invention. For example, the first-to-file system includes the new catch-all prior art category of anything ‘otherwise publicly disclosed.’”

Companies and inventors can still benefit from the current system if they act quickly, however. Here’s how:

1. Clear out the “patentable inventions” pipeline

“Work with your scientists, engineers, or other inventors now to determine if they have new inventions that are ready or will soon be ready to file patent applications upon so that you can file any patent applications on March 15, 2013 or earlier.” (Morrison & Foerster)

2. File any non-provisional applications in the works:

“If you filed a provisional application any time after March 15, 2012, and were planning to file a non-provisional (regular U.S. or PCT) application with added subject matter and/or claims within a year of that filing, you should file the non-provisional before March 16, 2013.” (Saul Ewing)

3. Consider continuation applications:

“Consider filing continuation applications, where appropriate, prior to March 16th. Having continuation applications on file prior to March 16th can remove any issues that may arise should a Patent Examiner allege that a newly presented claim includes subject matter not supported by the parent (or priority) application.” (Pillsbury)

4. Start working on process improvement:

“Streamline and optimize the process from invention disclosure to application drafting to provisional application filing. Under the new first-investor-to-file laws, companies with faster and more efficient processes will win the race to the PTO.” (Wilson Sonsini)

5. Bottom line – whatever you do, do it quickly:

“Because the change is only eight weeks away and you can bet that your patent attorney and everyone else’s patent attorney is going to get very busy as the deadline approaches. If you wait too long, you might find that your attorney will not be able to guarantee that an application can be prepared before the deadline.” (Downs Rachlin Martin)

Watch this video for additional recommendations:

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

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