Tips on Transitioning to First-to-File

The U.S. patent system transitions from a first-to-invent to a first-to file regime on MARCH 16, 2013.  For patent applications filed after that date that include claims that do not have priority to an application filed prior to that date, inventors will no longer be able to rely on earlier inventive activity to pre-date prior art.  If you have been working on an invention for a year and someone else has been working on it for a week, if that person files an application one day before you, after March 16, 2013 you cannot get a patent.

During 2012, inventors should file applications for inventions they might otherwise feel are not ready for patenting.  This is good practice simply to be the magic date.  There will be a spike in application filing during the first quarter of 2013 to beat the March 16 deadline.

After March 16, 2013, inventors should file applications early and frequently during the invention process so that they do not lose the race to the patent office.  If a competitor files first, even by one day, there will be no patent for you.  Each time there is a significant improvement to the invention, a new application should be filed to prevent competitors from winning the race on the improvement as well.

CONSIDER FILING MULTIPLE PROVISIONAL APPLICATIONS

Inventors will often file a quick provisional application before a public disclosure and then wait a year to file a full non-provisional application that includes sufficient detail to warrant a patent.  Under the first-to-file system, if the first provisional is not adequately supported and enabled, an intervening filing by a competitor may trump the first provisional.  That first provisional still has merit, but inventors should consider filing additional provisional applications as details of the invention are developed to prevent the harm from intervening applications.  Applicants will no longer be able to rely on inventive activity to pre-date prior art.

RELY ON THE DISCLOSURE PROVISION WITH CAUTION

The new provisions seem to include a grace period once an inventor discloses the invention as long as an application is filed within one year of that disclosure.  Outside of the potential loss of foreign patent rights, applicants should also be aware that competitors may see the disclosure and develop alternative solutions to the problem the invention solves.  They could create prior art that may render the invention obvious.

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2 Responses to “Tips on Transitioning to First-to-File”

  1. Implementation of First-to-File: PTO Rules and Guidelines « INVENTIVE STEP Says:

    [...] the new rules and changes sound confusing, that’s because they are.  My earlier advice regarding the transition remains.  My other advice is to seek the help and assistance of a patent [...]

  2. Provisional Patent Applications « INVENTIVE STEP Says:

    [...] Provisional applications may become even more necessary and important as we transition to first-to-file. [...]

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