On March 16, 2013, U.S. patent law will change from a “first-to-invent” patent system to a “first-to-file” patent system. Transitioning to a first-to-file system is intended to align the United States with all other industrialized countries. Under current U.S. law, the first person to invent and file for a patent is entitled to the patent, even if a person who invents the technology later files a patent application first. However, under the new law, the first person to file for a patent will be entitled to the patent.

Because of the potential advantages under the “first-to-invent” system, strong consideration should be given to filing patent applications before March 16, 2013. Thus, if your company or organization is contemplating filing for patent protection on an invention and would like to take advantage of the current patent law, the process should be initiated immediately, as the preparation and filing of a patent application is a time-consuming endeavor and there likely will be a spike in filings before March 16, 2013.

Filing before March 16, 2013:

What are Potential Advantages under the “First-to-Invent” System?

Proving an Earlier Date of Invention

The most significant advantage to filing under the “first-to-invent” system is that it allows applicants to potentially remove “prior art” (i.e., what was already known by the public, such as prior patents, publications, commercial products, etc.) by proving an earlier date of invention. In other words, an applicant who files before March 16, 2013 will still be allowed, in certain circumstances, to overcome prior art by proving that they invented the claimed technology before the pertinent prior art. Applicants who file on or after March 16, 2013, however, will not be entitled to rely on the same evidence.

Prior Art Definition

Patent applications filed after March 16, 2013 will be analyzed using an arguably broader definition of “prior art,” and accordingly, it may be more difficult to obtain patent protection under the new system. For example, under current U.S. law, prior art includes information that is “known or used by others” before an invention is conceived. Under the new system, however, prior art will include any information that is “otherwise available to the public” before the filing date. Further, under current U.S. law, prior art includes only public uses or sales that have occurred within the United States. Under the new system, prior art will be expanded to include public uses or sales outside of the United States. Finally, under current patent law, prior U.S. patents and published applications are considered prior art as of the earliest filing date within the United States. Under the new system, prior U.S. patents and published applications will be considered prior art as of the earliest filing date anywhere in the world.

Filing on or after March 16, 2013:

Strategies under the “First-to-File” System

After the new law takes effect, applicants may wish to consider the following strategies for enhancing the opportunity to secure patent protection under the “first-to-file” system:

Implement a Patent Program

When the change to the “first-to-file system” takes effect, there will be increased pressure to draft and file patent applications as quickly as possible, while still maintaining a high degree of quality. To prepare for this change, corporations and organizations will greatly benefit by having a systematic patent program in place before March 16, 2013. Such a program should include regular meetings (e.g., monthly, quarterly) where engineers, developers, and business managers, along with patent lawyers, analyze invention disclosures and decide whether to file for patents on the technology being developed internally. Companies and organizations that have a systematic patent program in place will be better positioned for the “first-to-file” system.

Filing of Provisional Applications

Under the first-to-file system, delays in filing could be detrimental to patent rights. A filing strategy that should be considered when the “first-to-file system” goes into effect on March 16, 2013 is the strategy of filing multiple provisional applications over the course of the “provisional year.” A provisional patent application filing is a kind of filing designed to allow inventors to get their new inventions on file with the U.S. Patent Office quickly, while buying some time to decide whether a full-blown utility application, and its corresponding costs and fees, are warranted. By filing multiple provisional applications during the provisional year, the inventive concepts would be “on-file” as early in time as possible. Then, as the provisional year is drawing to a close, all of the provisional applications could be combined into a single utility patent application.

Conclusion

The conversion from a “first-to-invent” to a “first-to-file” system is one of the most significant changes to U.S. patent law in recent history. Under the new system, patents will be awarded to the applicant who was first to file a patent application, as opposed to the applicant who invented first, thereby putting increased pressure to draft and file patent applications as quickly as possible.