United States: New Patent Regime Begins March 16, 2013: Are You Ready?

As widely reported, U.S. patent laws will change on March 16, 2013, when the U.S. will become a "first-inventor-to-file" jurisdiction - similar to the rest of the world. Under this system, where two inventors invent the same thing, the winner of the U.S. patent is the one who wins the race to the patent office. While it has always been advisable to file as early as possible, it will be much more important to do so beginning March 16. More immediately, it may be very important to file all applications that you can before March 16. This is because, in addition to migrating from a "first-to-invent" to a "first-inventor-to-file" jurisdiction, the new law will change when third party patent applications, publications and disclosures are effective as prior art.

Under the new rules, any third party public disclosure, such as a publication, presentation or offer for sale, will be available as prior art against an application as of the date of the disclosure, regardless of the filing date of the application.¹ By contrast, under current law, such disclosures made within one year before the filing of the application would not be available as statutory prior art under current 35 U.S.C. § 102(b).² These new rules will apply to any patent application filed after March 15, 2013, that does not claim priority to an earlier-filed application, i.e., to any application that is "effectively filed" on or after March 16, 2013.³

In addition, because the "invention" or "conception" date will no longer be relevant under the "first-inventor-to-file" system,⁴ it will be impossible to "swear behind" this third party non-statutory prior art by showing that the inventor invented the subject matter before the relevant prior art date. 

As a result, any prior third party disclosure, even as recent as the day before filing, will be prior art for any application effectively filed on or after March 16, 2013. The practical effect of these changes will be that more prior art will be usable to reject claims during prosecution or invalidate claims during litigation.

Moreover, any patent with an effective filing date on or after March 16, 2013, will be subject to possible challenge in the new Post-Grant Review proceeding; patents with an earlier effective filing date are not subject to this proceeding.

In view of the above, in most cases it will be preferable to file before March 16, 2013, so that current law governs examination and validity. We thus strongly recommend that, where possible, you finish development and file applications before March 16. We also recommend advancing filing of nonprovisional applications claiming priority to provisional applications, particularly where additional subject matter will be added to the disclosure prior to conversion. We can, of course, help you to identify candidate applications for early conversion.

Footnotes

1. A grace period will still apply to disclosures made by or through the inventor within one year of filing.

2. While the new rules provide a grace period where the inventor previously disclosed the invention within one year of the filing of the application and the third party disclosure occurs between the inventor's disclosure and the filing of the application, the patent office has interpreted this grace period extremely narrowly such that we anticipate it will be effective in only limited cases.

3. In general, every claim of any such application must be fully supported by the earlier-filed application in order for the application to be treated under the current prior art rules.

4. An exception is the rare case of derivation of the invention by a third party.

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.