First to File Patent System

Under the America Invents Act (AIA), the United States became a first-to-file patent system effective March 16, 2013.  The change to a first to file significant is significant since a patent applicant to file their patent application first is entitled to the patent rights regardless of their date of invention.  However, patents filed before March 16, 2013 are still governed by the first to invent rules.

Patents Governed by “First to Invent” Patent System

The following U.S. patent applications and patents are governed by the previous “first to invent” patent system:

  • Any patent applications filed before March 16, 2013.
  • Patent applications filed after March 16, 2013 or after if (1) the application claims priority to a previous application filed before March 16, 2013, and (2) all claims in the patent or patent application include only subject matter disclosed in the prior patent application (i.e. not one claim can be directed towards new subject matter).

Patents Governed by “First to File” Patent System

The following U.S. patent applications and patents are governed by the new “first to file” patent system:

  • Patent applications filed on March 16, 2013 or after.
  • Continuation-in-Part (CIP) patent applications filed on March 16, 2013 or after that (1) claim priority to a patent application filed

Benefits of the “First to File” Patent System

There are many benefits for the patent owners under the new U.S. first to file patent system including:

  • Simplification. Simplifies the determination as to who is entitled to a patent for an invention.
  • Certainty. Once a patent is granted, there is increased certainty for the patent owner and investors that the patent rights will remain vested with the patent owner.
  • Diligence Rewarded. Patent applicants who are diligent in filing patent applications early will be rewarded with the patent rights against another inventor who procrastinates.

Patent Strategies for the “First to File” Patent System

The following patent strategies should be considered by all individuals and companies that intend to file for patent protection in the United States:

  • Efficient Patent Management. Implement an efficient patent management system for your company that quickly reviews inventions that has the following qualities:
    • Encourages and facilitates early disclosure of new inventions by inventors in the company.
    • Patent Manager.  One person in the company should be designated as the Patent Manager where all inventions are submitted for review.
    • Review Fast.  Invention disclosures submitted should be quickly reviewed by the patent manager and/or patent committee.
    • Early Patent Decision.  An early decision should be made as to what action will be taken with the invention such as:
      • Nothing. Do not file a patent application;
      • Self-Draft. File a self-drafted provisional patent application immediately; or
      • Professional Preparation. File a professional drafted provisional/non-provisional patent application immediately prepared by a patent attorney.
    • Continuous Review. The Patent Manager should be constantly monitoring the progress and commercial potential for new inventions to help make a decision when to hire a patent attorney to prepare the non-provisional patent application.
    • Disclose to Patent Attorney. Once a decision has been made to patent the invention, the invention should be immediately submitted to the patent attorney for preparation of the non-provisional patent application.
  • File Provisional Applications. During the very initial stages of the invention process, you should consider filing a provisional patent application to establish a filing date for the inventive subject matter.  You may have to file multiple provisional patent applications as you improve your invention during the early months of the invention process which are sometimes referred to as “rolling provisional patent applications“.
  • File Non-Provisional Applications Sooner.  While filing a self-drafted patent application will provide you with an early filing date, the filing date is only good for the subject matter disclosed in the patent application.  Hence, you should talk to your patent attorney immediately to discuss the potential for filing a non-provisional patent application that typically will disclose additional subject matter not disclosed in the provisional patent application.