• U.S. Patent Law Transition From “First to Invent” to “First to File” - What a Patent Applicant Should Consider Before March 16, 2013
  • February 18, 2013 | Authors: Joe Byrne; Jason M. Hunt; Chris Hussin; Theodore J. Long; Eli Swanson
  • Law Firm: Boardman & Clark LLP - Madison Office
  • Beginning March 16, 2013, U.S. patent law will transition from a “first to invent” patent system to a “first to file” patent system. The current “first to invent” system is intended to award patents to the first person to invent a claimed invention, even if that person is not the first to file. The upcoming “first to file” system, however, will generally award patents to the first inventor to file an application in the U.S. patent office, even when that first inventor to file happens to be a later inventor.

    During the transition from the “first to invent” patent system to the “first to file” patent system, the U.S. patent office will be simultaneously operating under the two different patent systems. Examinable patent applications filed before March 16, 2013 will still be examined by the USPTO under the current “first to invent” system. Examinable patent applications filed on or after March 16, 2013, however, will be subject to the “first to file” system.

    There are several advantages to filing an examinable patent application before March 16, 2013 under the current “first to invent” system.

    The ability to overcome “prior art” during examination based upon an earlier date of invention.

    “Prior art” generally consists of information that is already known by the public, such as prior patents, publications, or commercial products. An applicant who files before March 16, 2013 will still be allowed, in certain circumstances, to overcome certain “prior art” which predates the application filing date, as long as the applicant can establish that the invention was invented before the date of the “prior art.” An applicant who files on or after March 16, 2013, however, will not be entitled to rely on an earlier date of invention, but will instead be limited to an application filing date which is typically after the date if invention.

    A narrower definition of what is considered “prior art” during examination.

    The “first to file” patent system includes a change to the statutory definition of “prior art.” Specifically, applications filed on or after March 16, 2013 will be subject to a broader definition of what constitutes “prior art.” In certain circumstances this may make it more difficult to acquire a patent, as a publication which may not be treated as “prior art” under the “first to invent” patent system may be considered “prior art” under the broader definition provided in the “first to file” patent system. For example, in certain circumstances, “prior art” currently includes information that is “known or used by others” before the date of invention. Beginning on March 16, 2013, “prior art” under the same circumstances will include any information that is “otherwise available to the public” before the filing date, which is typically after the date of invention.

    Increased U.S. Patent Office Fees after March 18, 2013

    On March 19, 2013, a significant revision in fees goes into effect at the U.S. patent office. The basic fees paid to the U.S. patent office by most applicants for filing, searching, and examining a patent application will increase over 25%.

    Conclusion

    In addition to the change to a “first-to-file” patent system, several other changes made to U.S. patent law will affect how patents filed after March 16, 2013 are examined, interpreted, and litigated in the future. These changes will carry with them some uncertainty compared to the existing “first to invent” patent system until the changes are interpreted by the courts.

    Due to the potential advantages of the “first to invent” system, anyone who is contemplating filing for patent protection on an invention should carefully consider whether to file any new patent applications prior to the March 16, 2013 deadline.

    Such consideration should be given to any patent application that could be filed before or after March 16, 2013, including provisional, non-provisional and design patent applications, regardless of whether the application claims priority to another application filed before March 16, 2013.