First-to-File Takes Effect March 16

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 the next six weeks, 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.  This is even important if you have pending applications for which you wish to add new claims that are not supported by an earlier application (CIP), as these will be examined under the first-to-file rules.

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.


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.


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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One Response to “First-to-File Takes Effect March 16”

  1. What Grace Period? Another Reason to File by March 16 | INVENTIVE STEP Says:

    [...] this is a significant limitation of the grace period.  Under the letter of the new law, applicants can still publicly disclose their inventions and [...]

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