Important Changes to U.S. Patent Law: First-to-File

The United States will transition to a first-to-file patent system on March 16, 2013. Here are some key points U.S. patent applicants should be aware of.

1. Which patent applications will be governed by the first-to-file laws?

• Applications that present even a single claim that has an effective filing date of March 16, 2013, or later will be governed by the first-to-file laws. Once such a patent claim is presented, the first-to-file laws will apply, even if that claim is canceled.
• Applications that claim priority to a patent application that is governed by the first-to-file laws also will be governed by the first-to-file laws. Once such a priority claim is presented, the first-to-file laws will apply, even if that priority claim is deleted.

2. What are some key effects of the first-to-file laws?

• Evidence of an earlier date of invention cannot be used to "swear behind" or "antedate" a third-party disclosure in applications governed by the first-to-file laws.
• The pre-first-to-file 12 month grace period has been eliminated and replaced by a more limited “exception” from the definition of prior art.  The exception applies only for disclosures made one year or less before the filing date of a claimed invention by an inventor or one who derived the disclosure from the inventor.
• Public uses, sales, offers for sale, etc., that take place anywhere in the world may constitute prior art.
• Published U.S. patent applications and PCT applications that designate the United States will be citable against applications governed by the first-to-file laws as of the earliest priority date associated with the disclosure at issue, rather than only as of the earliest effective U.S. filing date.
• Applications governed by the first-to-file laws will be subject to the new post-grant review proceedings that third parties can use to challenge validity once the patent is granted.

3. How might first-to-file laws impact patent application filing strategies?

• For inventions that may be ready for patenting before March 16, 2013, applicants may want to consider filing patent applications by March 15, 2013, to avoid the first-to-file laws.
• For inventions for which provisional applications have been filed since March 15, 2012, applicants may want to consider filing nonprovisional applications by March 15, 2013, to avoid the first-to-file laws.
• For nonprovisional applications to be filed on or after March 16, 2013, that have a priority date of March 15, 2013, or earlier (including continuation-in-part applications) that may have any new material beyond that disclosed in the priority application, applicants may want to consider filing parallel applications to segregate patent claims with an earlier effective filing date from those directed to the new material to avoid the first-to-file laws for the earlier subject matter.

4. What can be done to prepare for first-to-file?

• Streamline internal invention disclosure and patenting processes to facilitate the ability to secure an early effective filing date.
• Advise in-house patent professionals and inventors of the continued importance of filing patent applications before making any public disclosures, and the new importance of maintaining good records of the details of any public disclosures that are made before a patent application is filed.