IP Law Bulletin

The switch to a "first inventor to file" system will have a number of significant effects on patent applications filed on or after March 16, 2013. This article does not comprehensively enumerate or discuss all of the changes, but highlights some of the most significant changes for applications filed on or after March 16, 2013. One such change is that applicants will no longer be able to claim priority based on the date of invention to get around earlier dated prior art. Instead, the PTO will award a patent based on the application with the "earliest effective filing date." This date is set as the filing date of the application or the earliest available priority date of a parent application or corresponding foreign application. This change aligns the United States patent system with most every other country's system, which have been operating under "first inventor to file" rules for some time. However, unlike most foreign countries, the United States has retained a one year grace period for an inventor's own disclosures. Accordingly, an inventor having a later application filing date at the PTO, but an earlier disclosure within the one year grace period, can still win out over an application filed by another in the intervening time, subject to some limited exceptions.

Another significant effect of the AIA's first inventor to file provisions is that the scope of prior art available to invalidate an application will increase. For example, amended 35 U.S.C. §§ 102 and 103 are drafted in relation to the earliest effective filing date of an application, rather than the date of invention in some instances. Additionally, § 102 eliminates geographic limitations for prior art, thereby expanding potential prior art to include, for example, sales, public uses, and offers for sale outside the U.S. To paraphrase the House Report on the AIA, prior art will typically include all art that exists prior to the filing date, other than disclosures by the inventor within one year of filing. Further coverage of the expansion of the scope of prior art is available in Nutter's IP Bulletin article from November 2011.

A third significant effect of filing an application on or after March 16, 2013 is that any patent issuing from the application will be subject to the new Post-Grant Review (PGR) procedure. PGR is similar in concept to European opposition proceedings and provides an opportunity for a third party to challenge a patent within the first nine months of its issuance. The third party can petition for cancellation of claims based on any ground that could be raised under 35 U.S.C. § 282(b)(2) and (3) (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode). More information on PGR and the other post-grant proceedings under the AIA can be found in Nutter's IP Bulletin articles from November 2011 (comparing PGR to European opposition proceedings) and September 2012 (discussing the various post-grant proceedings).

Given the more restrictive means for establishing priority, the expanded prior art universe, and the availability of new post-grant challenge proceedings, practitioners and applicants may find it advantageous to file as many applications as possible in advance of March 16, 2013 to remain under the pre-AIA legal regime. This can include fast-tracking the preparation and filing of both utility and provisional applications. However, practitioners and applicants should be aware that the AIA's first inventor to file provisions apply to any application or subsequent patent that contains, or contained at any time, a claim having an effective filing date on or after March 16, 2013, or a priority claim to an application that contains, or contained at any time, such a claim. Therefore, claiming priority to a provisional or parent application filed before March 16, 2013 can be ineffective to circumvent the new first inventor to file provisions if any claim, even if later canceled, cannot find full support in the earlier-filed application.

Practitioners and applicants interested in remaining under the pre-AIA legal regime should consider taking the following steps before March 16, 2013:

1. Convert any pending U.S. provisional applications into utility applications;
2. Prepare and file utility applications on any old invention disclosures that have been on hold;¹
3. Organize a meeting of your organization’s patent review board or committee to review any pending invention disclosures and decide if an application should be filed; and 
4. File any desired continuation applications.¹

To the extent possible, these steps should be taken immediately. In particular, applicants interested in filing a patent application in advance of March 16, 2013, are recommended to contact their patent attorney(s) as soon as possible, as little time remains to properly draft an application and file it in advance of the impending deadline. For further reading on the first inventor to file provisions of the AIA, please see Nutter's IP Bulletin articles from November 2011 (discussing additional implications of the "first inventor to file" provisions) and May 2012 (discussing internal invention documentation in wake of the "first inventor to file" provisions).

¹ Note that while a complete provisional application can provide the necessary pre-AIA effective filing date, and a continuation application can also reach back to an earlier effective filing date, the fact that an unsupported claim (even if introduced and later canceled) can switch the applicable legal regime makes filing full utility applications and continuing applications in advance of March 16, 2013 the more prudent course.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.