What You Need to Know
March 16, 2013 is a critical cross-over date in the U.S. patent
law which changes from a first-to-invent system to a first-to-file
system. Under the current first-to-invent system, the first person
to invent is entitled to patent rights. Under the new first-to-file
system, patent rights are granted to the first inventor to file a
patent application regardless of who was the first to invent. Any
application or patent that contains, or contained at any time, a
claimed invention having an effective filing date on or after March
16, 2013, will be subject to the new first-to-file system. The
first-to-file system opens up a significantly larger body of prior
art applicable to a claimed invention. Accordingly, we suggest, if
at all possible, taking necessary steps to ensure that applications
filed in the immediate future fall under the old first-to-invent
system. A brief overview of how applications are affected by this
change follows.
- Pending applications: First-to-file is only applicable when an application contains, or contained at any time, a claimed invention having an effective filing date of March 16, 2013 or later. Thus, applications pending before March 16, 2013 remain under the first-to-invent system even if new claims are added during prosecution, so long as the original disclosure of the pending application supports the new claims.
- New applications (without a priority claim): Any new, non-priority, non-provisional application that is intended to be prosecuted under the first-to-invent system needs to be filed before March 16, 2013.
- Continuation-in-part applications will be subject to the first-to-file system if the application contains, or contained at any time, any claimed invention having an effective filing date of March 16, 2013 or after. If just a single claim requires support of subject matter added on or after March 16, 2013, the whole application and any of its progeny (i.e. continuation or divisional) application are subject to first-to-file rules. Thus, great care should be taken when drafting the claims for a continuation-in-part application.
- Applications claiming domestic or foreign priority to applications filed before March 16, 2013: U.S. applications filed on or after March 16, 2013 and claiming priority to any application filed before March 16, 2013 (i.e. a continuation, divisional, U.S. national stage, or a non-provisional claiming benefit of a provisional application or a foreign application) will still be subject to the first-to-invent system, so long as no claimed invention requires support of subject matter added to the application on or after March 16, 2013. Great care should be taken to ensure that the priority document complies with U.S. requirements for enabling disclosure. Any disclosure added to an application claiming an earlier priority and filed on or after March 16, 2013, will convert the application and any of its progeny applications to a first-to-file application, if the added disclosure is required to support any claim in the application (i.e. such a claim would then have an effective filing date after the critical date).
Please contact us immediately if you wish to file a U.S. patent application before the March 16, 2013 cross-over date, or if you have any questions regarding the foregoing.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
