We find ourselves in the middle of one of the greatest wealth transfer periods of all time. Those with wealth must decide whether they want to make transfers, and if they do, they must decide how much, to whom, when and in what structure?
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The race to file first begins. The first-to-invent system rewarded the first to invent rather than the winner of a race to file. After March 16, the first-to-file system rewards the first to file an application for an invention. Notably, the shift means that inventors can no longer use earlier inventive work to antedate earlier-filed applications or publications.
Inventors remain protected against their own disclosures that occur less than one year before filing an application. After March 16, the only way for an inventor to obtain a grace period against another under the first-to-file system is to disclose the invention publicly less than one year before filing and before another discloses the invention publicly. But public disclosure before filing a patent application renders the subject matter unpatentable in almost all foreign countries. Moreover, prior art under the first-to-file system further includes published foreign patent applications having an effective filing date in the U.S.
While a patent granted on a first-to-file application can be challenged within nine months after the grant of patent, it is incredibly costly.
First-to-invent system available until March 16. If both the priority date and the filing date of a U.S. application (a non-provisional U.S. patent application or a Patent Cooperation Treaty (PCT) application designating the U.S.) occur before March 16, the existing first-to-invent law will apply. If no claims in a U.S. patent application are entitled to a priority date before that, then the first-to-file law will apply. If any claims in an application filed on or after March 16 are not entitled to a priority date before then, even if those claims are later canceled, the entire application will be subject to the first-to-file law.
If an applicant files prior to March 16 and broadly claims an invention insufficiently described by a limited number of embodiments, and then files the identical claims on or after that describing additional embodiments to support the breadth of claims, then the first-to-file law applies to the entire application.
Strategic planning. Adding new subject matter in a non-provisional or PCT application designating the U.S. filed after March 16 and claiming the benefit of a provisional patent application irreversibly places the non-provisional patent application, and any continuing applications, in the first-to-file system. The best practice to place a non-provisional application in the first-to-invent system is to file the non-provisional or PCT application designating the U.S. before March 16.
If filing the non-provisional application or the PCT application designating the U.S. prior to March 16 would unacceptably shorten the potential patent term, then an additional provisional application adding subject matter should be filed prior to then to establish a priority date for as much subject matter as possible.
Non-provisional and PCT applications. To take advantage of first-to-invent, file non-provisional and PCT applications designating the U.S. before March 16, then do not add any new claim or amend any original claim to include new subject matter.
Under the first-to-file system, another U.S. applicant will most likely not be able to overcome an earlier-filed, even though later published, U.S. patent or application. Inventors should, therefore, file applications as early as possible to create prior art. Inventors should also file an incremental series of U.S. applications for defensive purposes as research and development efforts create new inventions.
The first-to-file system exempts from the prior art disclosures appearing in earlier-filed, later-published patents and applications if the subject matter disclosed and the claimed invention were owned by the same entity or subject to an obligation of assignment to the same entity, not later than the effective filing date of the invention claimed. Entities that have employees in multiple countries, employed by different legal entities or assign patent ownership to different legal entities in different countries, should create an obligation to assign to the same legal entity that owns any earlier-filed patent or application.
Monumental changes, practical consequences. The transition to the first-to-invent system represents a monumental change in U.S. patent law. Given the uncertainty of how the U.S. Patent and Trademark Office and courts will interpret and apply the AIA, inventors and applicants need to obtain immediate guidance from their professional consultants.
Alan F. Blakley is a lawyer with CR MILES PC in Fort Collins. He may be reached at firstname.lastname@example.org. The information included in this column is general information. You should contact your own lawyer before making any legal decisions.