Patent Reform: 5 Things You Should Know About… First-to-File

“Being the first to think of an idea will now be the legal equivalent of our timber-seeking ancestors who were the first to discover valuable timber — it just gives you bragging rights, not legal rights. If you want legal protection, you need to win the race to the government agency.” (From The America Invents Act: A Race to the Patent Office by Warner Norcross & Judd)

The Leahy-Smith America Invents Act, signed into law on September 16, 2011, brings sweeping reform to the United States patent system for the first time in nearly 60 years. The move from a “first to invent” to a “first to file” system is arguably the most significant change of the law. From lawyers and law firms on JD Supra, five aspects of the “first to file” system and how it will (or won’t) change the way you protect your intellectual property:

1. It’s a big deal:

“This landmark piece of legislation fundamentally changes the U.S. patent system by awarding patents to the first inventor to file an application with the U.S. Patent and Trademark Office. Thus, in order to stay competitive, inventors of all sizes will need to file patent applications quickly and frequently in order to stay a step ahead of their competition.” (From First-to-File or First-to-Invent? New Patent Reform Act Changes the Game by Sutherland Asbill & Brennan LLP)

2. It’s more than a question of filing dates:

“The ability to establish a publication date prior to a third party independent disclosure and then file within one year of one’s own publication raises interesting issues. This feature has been referred to by some as creating a ‘first to publish as long as you file within a year’ system rather than a true first to file system.” (From US Patent Law Reform 2011 by Ladas & Parry LLP)

3. You’ve got some time to get ready:

“The ‘first inventor-to-file’ law will take effect on March 16, 2013 (18 months from passage) and will apply to new patent applications filed on or after that date.” (From Patent Reform Introduces “First-Inventor-to-File” Law by Thompson Coburn LLP)

4. It should eliminate some uncertainty in the patent system

“For priority purposes, only the date of filing will need to be determined, not the actual date of invention.” (From America Invents Act Significantly Changes Patent Law by Armstrong Teasdale LLP)

5. It might not be the game changer that most people think:

“… We anticipate that this change will have minimal impact for most companies. Most companies with patent programs generally file as early as possible to preserve their options for international patent rights, and to avoid junior status in the U.S. should another party file for the same invention.” (From Patent Alert – Historic Patent Reform Passes Congress, but Will Have Minimal Effect on Most Companies by Fenwick & West LLP)


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