The Patent Race is On: “First to File” Takes Effect March 16, 2013

The Race is On: “First to File” Takes Effect March 16, 2013

Inventors: warm up, stretch, and don your running shoes. On March 16, 2013, the gun goes off and the “race to the patent office” starts.

Under the recent America Invents Act, this is the date on which the U.S. converts from a “first to invent” to a "first-to-file" (FITF) country for determining competing inventors’ rights for a patent.

In recent posts on the LexisNexis® Patent Community, experts recommended that inventors move decisively to beat the deadline and preserve their rights by filing new, continuation, and continuation in part (CIP) applications before March 16.

Until now, the U.S. has been the only “first-to-invent” country. When two inventors filed applications covering the same invention, the inventor who could prove that he or she originated the invention got the patent. From and after March 16, the winner will be the inventor who first files the application. Inventors no longer will be able to obtain patent rights by showing they were the first to invent, explained Robert Schaffer, Joseph R. Robinson and Nicole Sullivan, of Troutman Sanders LLP, in a February 5, 2013, post.

“It is usually better to have the option of proving earlier inventorship than relying on the date a patent application was filed. To preserve the ‘first-to-invent’ advantages for as long as possible, we recommend filing new and continuation applications for significant inventions in your pipeline before March 16, 2013,” Schaffer, Robinson, and Sullivan wrote. http://www.lexisnexis.com/community/patentlaw/blogs/patentlegislationandreform/archive/2013/02/05/troutman-sanders-llp-u-s-becomes-first-to-file-country-for-patents-on-march-16-2013-consider-strategic-action-now.aspx.

Schaffer, Robinson, and Sullivan recommended filing new―not provisional―applications before March 16 for inventions that are “reasonably ready” for patenting, which will grandfather each new invention and application (and possibly all future continuation and divisional applications based on the new application) under the “first-to-invent” rule. Filing a regular application is better than filing a provisional one, because anything added in a provisional application when it is converted to a regular application (on or after March 16) could be considered “new matter” (if part of even a single claim) and thus destroy "first-to-invent" status. They also recommended filing continuation applications now to shield them from retroactive application of the new rule.

CIP applications should be filed now, if possible, so that all of the claims in the family will have "first-to-invent" status. A CIP filed after March 16 will remain “first-to-invent” only if every claim is supported by the original pre-March 16 disclosure, which ordinarily would defeat the purpose of a CIP, they wrote.

Mark W. Hetzler and Jeffrey A. Chelstrom of Fitch, Even, Tabin & Flannery LLP expressed similar sentiments in their January 31, 2013, post. “We believe that, in most situations, it will be advantageous to file any new patent applications before March 16, 2013, for inventions that are sufficiently developed. This will eliminate some potentially negative consequences of the new law,” they wrote. http://www.lexisnexis.com/community/patentlaw/blogs/patentlegislationandreform/archive/2013/01/31/fitch-even-tabin-amp-flannery-llp-u-s-patent-system-changes-from-first-to-invent-to-first-to-file-system-on-march-16-2013.aspx

Weighing in on February 5, 2013, the IP firm Brinks Hofer Gilson & Lione wrote that “Companies and inventors should take full advantage of the current system before the transition to AIA. From now until the FITF provisions become effective, companies and inventors should accelerate their invention development and generation of invention disclosures. They should also proceed quickly to review all existing invention disclosures, make decisions on patent filings and proceed with patent applications on all worthwhile inventions.”

Hetzler and Chelstrom said inventors will see the following changes:

• Widening of the scope of what is considered prior art. “U.S. patents, U.S. publications, and PCT publications can be prior art under the new law as of their earliest filing date anywhere in the world. The new law, in other words, eliminates the so-called Hilmer rule. [In re Hilmer, 359 F.2d 859 (CCPA 1966)]. In addition, public disclosures and on-sale activity, which were previously limited to U.S. activity, will constitute prior art to U.S. patents and applications regardless of where in the world such disclosure or activity occurred,” they said.

• Priority of invention will be essentially irrelevant, and inventors will lose the ability to overcome certain prior art by proving an earlier invention date. Inventors also will generally lose the ability to enter interference proceedings with competitor patents and applications.

• The current one-year grace period, which previously removed some prior art references, will be more limited and will be coupled to public disclosures that are tied to the inventor. Additionally, a public disclosure of an invention will enable the inventor to overcome certain prior art references. “Although an inventor might consider making an early public disclosure for the express purpose of overcoming later-published prior art, we generally do not recommend this approach, principally because such disclosure may affect patent rights in countries outside the U.S.,” they added.

• Expansion of the grounds for invalidation of granted patents. “Patents issuing from applications filed on or after March 16, 2013, may be challenged under a new post-grant review process,” Hetzler and Chestrom explained.

• Expect acceleration of filing efforts between now and March 15, they said. “In competitive fields, there may be other disclosures that will antedate any applications filed after March 15, and such later-filed applications will not be able to overcome the prior art status of the earlier-filed applications, even if, under current law, there would be priority of invention.”

Brinks Hofer Gilson & Lione advised that patent review committees should meet frequently to hasten decisions regarding new or existing invention disclosures. The committees should assess outstanding invention disclosures for commercial or strategic importance and consider the following actions:

• Proceeding now with patent applications on all important or potentially important core business inventions;

• Proceeding with patent application on inventions in highly competitive technologies (competitors will seek to file patent applications before the AIA transition and their filings could bar your post-AIA filing, even if your date of invention precedes their filing date); and

• Proceeding with invention disclosures that would be pursued CIP applications.

The U.S. Patent and Trademark Office Rules to implement the AIA are in the process of being finalized, noted Schaffer, Robinson, and Sullivan. “Given the short period between publication of the final rules and when they go into effect (one month), it makes sense to start filing applications now,” they said.

The bottom line for inventors is that there is no downside to early action, other than the incremental costs of risk-reduction by filing additional applications. The upside is that “first-to-invent” status could make the difference in whether you are able to win a contest between different inventors competing to patent the same subject matter.