United States: What You Need To Know About The USPTO’s Final Rules And Examination Guidelines For The First-To-File Provisions Of The Leahy-Smith America Invents Act

The USPTO's final rules and examination guidelines for the first-to-file provisions of the Leahy-Smith America Invents Act, which was issued on February 14, 2013, contain several provisions that require Applicant action or consideration.

Key Rules Applicants Should Know

Treatment of transition applications

The first-to-file system is applicable to any application or patent that contains, or contained at any time, any claimed invention having an effective filing date on or after March 16, 2013. Once an application is subject to first-to-file rules, any progeny (i.e. continuation or divisional) of that application will also be subject to first-to-file rules.

The USPTO places the burden on Applicants to indicate if a transition application (i.e. an application filed on or after March 16, 2013, which claims priority to an earlier application filed before that date) is subject to the first-to-file system. Unless Applicants indicate otherwise, the USPTO will examine a transition application under the first-to-invent system. Applicants must file a statement with the USPTO indicating that a transition application is subject to first-to-file when the application contains or contained at any time a claim having an effective filing on or after March 16, 2013. The statement may, therefore, be necessary in any application filed on or after March 16, 2013, claiming domestic or foreign priority to an earlier filed application and which adds new disclosure to the application which is required for the support of any claim made in the application. No claim-by-claim analysis is necessary. This statement has to be filed within the later of: (a) four months from the actual U.S. filing date; (b) four months from the entry into U.S. national stage; (c) sixteen months from the filing date of the prior filed application; or (d) the first time a claim having an effective filing date on or after March 16, 2013 is presented. The USPTO is revising the application data sheet template to include a check box to make this statement.

Such a statement does not need to be filed when persons having a duty of disclosure reasonably believe that the application does not contain a claim having an effective filing date of on or after March 16, 2013. Thus, the USPTO ties the requirement for such statements with the duty of disclosure (i.e. the general duty of candor and good faith of dealing with the USPTO). In egregious cases, a court may deem a deliberate violation of that duty to amount to inequitable conduct, which renders a patent unenforceable.

Foreign priority claims and references to related applications

For any application filed on or after March 16, 2013, the new rules require filing the certified copy of a foreign priority application within the later of four months of from the actual filing date or sixteen months from the filing date of the foreign priority application. The requirement may be satisfied by filing a request for electronic transfer of the priority document from a foreign intellectual property office that allows the USPTO access to such application (i.e. the European Patent Office, Japanese Patent Office, Korean Intellectual Property Office or WIPO); or by providing an interim copy of the priority application within the four/sixteen months window and a certified copy before grant of the U.S. patent. The rules also provide for a good cause exception that allows for submission of the priority document after the specified periods.

A translation of the priority application only needs to be submitted (1) when the application is involved in an interference or derivation proceeding, (2) when necessary to overcome the date of a reference relied upon the Examiner, or (3) when required by the Examiner. The rules also specify that cross-references to related applications (including foreign applications) to which priority is not claimed should only appear in the specification instead of in an application data sheet. However, applications from which priority is claimed must be identified in the application data sheet.

USPTO Guidelines for Examination of First-to-File Applications

The America Invents Act expands the scope of available prior art applicable to a first-to-file application. In addition to patents and printed publications, a prior "public" sale and/or use anywhere in the world by another are a bar to patentability. According to the Examination Guidelines, "private" sales and uses will not constitute prior art, which is a deviation from existing law. Further, U.S. applications/patents and published PCT applications designating the U.S. are prior art as of their earliest claimed domestic or foreign priority date.

Practice Tips

Transition applications

For transition applications that add additional matter, Applicants may want to consider a clear demarcation of what matter has been added to allow an easy determination of whether the application should be examined under first-to-file. In some circumstances, Applicants may want to consider filing two applications: (1) an application which only contains claims relying on material disclosed in an earlier application filed prior to before March 16, 2013; and (2) an application for claims relying on subject matter added on or after March 16, 2013.

Provision of foreign priority documents

Applicants relying on a foreign priority claim should consider providing the certified copy of the foreign priority along with the filing instructions to ensure that the certified copy is timely filed.

Addition of new claims

The rules package indicates that amendments (other than preliminary amendments filed with the application) that seek to add a new claim that is directed to new matter does not convert an application into a first-to-file application. Thus, Applicants cannot inadvertently automatically convert an application to a first-to-file application by introducing a claim that the USPTO subsequently rejects for allegedly being new matter. However, if there is any doubt as to whether the claim is supported by the specification, Applicants may want to consider delaying filing a preliminary amendment, which adds new claims, until after the filing of the application.

The USPTO rules and guidelines provide Applicants with some insights into the scope of prior art under complex prior art provisions of the America Invents Act. In the future, courts will likely determine the scope of these prior art provisions. In the meantime, Applicants may want to consider consulting with their patent counsel as to how to navigate this new regulatory framework. If you have any questions regarding this new regulatory framework or patent law, do not hesitate to contact our patent practitioners.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.