March 16 to Mark New “First-to-File” Patenting System

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ANN ARBOR — For patent seekers and patent attorneys alike, March 16, 2013 will be a momentous date. That’s the day the U.S. transitions from its current “first-to-invent” system to a “first-inventor-to-file” system under patent reform. Although this system has been in place in every other country in the world for some time, U.S. companies are rightfully concerned about how best to prosecute patents under the new system, according to Eric Sosenko, a shareholder at Brinks Hofer Gilson & Lione, one of the largest intellectual property law firms in the U.S., and the leader of the firm’s patent reform task force.

“The new “first-inventor-to-file” system will simplify the determination of who is entitled to a patent on an invention, but the current system offers numerous benefits to applicants for patents” said Sosenko.

One major benefit of the current system is the ability to swear behind a cited reference based on the inception/conception date of the invention claimed in the application. That ability will no longer exist once the new patent laws of the America Invents Act fully take effect. In addition, the provisions of this act have expanded the scope of the documents and activities that can be used to reject patent applications. Thus, certain documents or activities may not be considered as “prior art” for a patent application filed before March 16, 2013, but will be for applications on or after March 16, 2013. Further benefits for pre-America Invents Act patent applications are that such applications are not susceptible to invalidity challenges under the new Post-Grant Review proceedings and are less susceptible to third-party challenges by way of prior art submissions to the U.S. Patent and Trademark Office while the patent application is pending.

All regular, provisional, continuation, continuation-in-part, and divisional patent applications filed before March 16, 2013 will be evaluated by the Patent Office under the pre-America Invents Act first-to-invent system. Thus, patent applicants will benefit from pursuing patent protection now for all inventions conceived before March 16, 2013 so as to preserve the first-to-invent advantage.

Actions before March 16, 2013

“Companies and inventors should take full advantage of the current system before the transition to the America Invents Act. From now until the “first-to-invent” provisions become effective, companies and inventors should accelerate their invention development and generation of invention disclosures. They should also proceed quickly to review all existing invention disclosures, make decisions on patent filings and proceed with patent applications on all worthwhile inventions,” explained Sosenko.

Sosenko suggests the following actions be executed in the areas of patenting decisions, invention disclosures, and provisional patent applications.

Patenting Decisions

Patent review committees should meet frequently to hasten decisions relating to any new or existing invention disclosures. The committee should assess any outstanding invention disclosures for commercial or strategic importance and consider the following actions:

  • Proceeding now with patent applications on all important or potentially important core business inventions
  • Proceeding with patent applications on inventions in highly competitive technologies (competitors will be seeking to file patent applications before the America Invents Act transition and those filings will bar a company’s post-Act filing, even if the date of invention precedes the competitor’s filing date)
  • Proceeding with invention disclosures that would be pursued as continuation-in-part patent applications (continuation-in-part applications will not obtain the benefit of the related earlier filed application for the purpose of treatment as a pre-America Invents Act filing).

Invention Disclosures

Companies should require both prolific and non-prolific inventors to review their projects and submit new invention disclosures as quickly as possible for review by the corporate patent review committee.

Provisional Patent Applications

Companies should consider the strategic use of provisional applications as the “first-inventor-to-file” effective date approaches. Provisional applications and their subsequent non-provisional counterparts will have the full complement of pre-Act benefits. Companies should determine which inventions merit the effort of filing provisional applications, bearing in mind that any provisional application should describe a sufficiently enabled preferred embodiment and include claims and drawings. Embodiments that are non-enabled in a provisional application and subsequently enabled in a related post-Act non-provisional application will result in the entire application being treated as a post-Act filing.

“A new world awaits the patent community after March 16th. Until then, there’s still time to gain an advantage from the benefits of the current system, which has served this country well since the Patent Act of 1836,” concluded Sosenko.

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