As of today, we are two months from March 15, 2013–the last day to secure an effective filing date under the current “first to invent” patent system. While we still are waiting for the USPTO to publish its final rules implementing the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), most of those rules will come into play after an application is filed. For the time being, inventors and applicants should be considering whether patent applications that may be ready for filing should be filed before or after the effective date of the first-to-file laws. This article provides a non-comprehensive, big picture review of the changes that take effect on March 16, 2013.
Which patent applications will be governed by the first-to-file laws?
What are some key effects of the first-to-file laws?
How will this impact patent application filing strategies?
Will it really matter if an application is filed before or after March 16, 2013?
If an application is filed on March 15, but an independent third party published the same invention on March 14, the applicant may be able to “swear behind” the publication by establishing an earlier date of invention. If the same application is not filed until March 16, the applicant may not be able to obtain a patent unless one of the limited exceptions under the AIA version of 35 USC § 102(b) can be established. (Please see this article for a review of the “grace period shielding disclosure” exception, for example).
Could it be advantageous to wait to file an application until March 16, 2013?
There are some circumstances under which an application may benefit from examination under the first-to-file laws.
Deciding on a Case-by-Case Basis
The decision to file an application before or after March 16, 2013 can be a complicated one, and should be made on a case-by-case basis with the advice of counsel. The USPTO also has the following AIA resources:
phone: 1 855 HELP AIA