Enriching Life Through Innovative Ideas SM

NEW GUIDELINES UNDER THE FIRST-TO-FILE SYSTEM

The implementation of the first-to-file system established by the America Invents Act
(AIA) will take effect on March 16, 2013. On February 14, 2013, the United States Patent and Trademark Office published a series of guidelines to govern first-to-file patent procedures*. The implications resulting from these provisions will include restrictions to invention patentability. Listed below are some of the changes instated by the first-to-file system with regard to patent applications.

1) Priority of invention will be given to the first person to disclose the claimed invention (the patent application is due within a year from disclosure) or to file a patent application with the U.S. Patent and Trademark Office.

2) There will be increased restrictions to exceptions of disclosures made before the effective filing date. If the disclosures are made within a year of the claimed invention’s filing date, then only disclosures of the same inventive subject matter will be considered. Disclosures that are merely similar or linked to the inventive subject matter may not qualify for patentability.

3) All claimed inventions, both domestic and international, that are published, sold, patented, or publicized in a similar manner before the effective filing date will not qualify for patentability. This broadens the criteria for defining prior art and thus the threshold for patentability will be raised.

4) Obviousness will be established before the filing date under the first-to-file system. Previously under the first-to-invent system, obviousness was generally determined by the date of invention.

5) Once a patent application is bound to the provisions of the first-to-file system, the application and any subsequent matters (i.e.: continuation-in-part application or a non provisional application based on a provisional application) will always be subject to the provisions**.

Note: The information provided herein is for informational purposes only. All filing strategies in light of the new first-inventor-to-file provisions should be reviewed with counsel prior to implementation.

*The new first-to-file provisions apply to patent applications that have an effective filing date after March 15, 2013. An effective filing date under the AIA is defined as (1) the actual filing date of the patent or the application for the patent containing a claim to the invention; or (2) the filing date of the earlist application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. § 119, 120, 121, or 365. 35 U.S.C. 100(i).

**AIA § 3(n)(1)-(2).

FindLaw Network

What Our Clients Say

Starting a new business can be a bit scary. Aside from worries of failure, there’s also the hassle of making sure all legal paperwork are properly filed. I reached out to Mr. Wang (Tommy) because of his excellent reviews and reputation and I am so glad I did. He was thorough and meticulous in answering all of my concerns and took time to find out special laws and policies regarding the kind of business I am starting. I could focus on the daily practical side of starting my new office without worry because I felt Tommy was reliable and took my case seriously. My business is opened and it’s all been a smooth start because of Tommy’s help. I have plans to start another business venture in the next few years and I already know I’ll be coming back to Wang IP Law.

The Shindig W.

I came to Tommy for help reviewing a licensing agreement I had secured with a well-known manufacturer. Tommy made sure I understood all the details in the contract and he negotiated with the company to improve my side of the deal. I mentioned to Tommy at my first consultation that we were looking to expand throughout the US and were investing a lot of money to make a big entrance into the market. I did not think I would have my store open so soon but Tommy also has connections with the local area and realtors to help me secure the location for my first store in the Los Angeles area. Tommy works a lot with the local businesses and he understands how to transition from the Asian market to US market. Within 8 months my store was open for business and fully operating. I must recommend Tommy to any business owners looking for help with contracts and improving their side of the deal. Tommy has the knowledge and experience to make sure there is a smooth process to open for business here, and make sure that your company is set up for success.

LI H.

I think Tommy and his team by far considered the best people to work with in my 16 business years. Beside quick responses to all my inquiries, they also done things right and providing very professional solutions. I’m highly recommending Tommy and his firm to all business owners.

Calvin C.

I have been working on my Utility Patent for almost 4 years. I have hired and fired two very reputable IP firms because with all their expertise and reputation for being some of the top firms in IP Law, I felt a lack of connection and care in my product, time and financial investment. Then I found Tommy and his team. Tommy does not waste time. He and his team are professional and extremely thorough. After 4 years, I finally found a legal team that I felt spent the time to really understand the components of my utility patent. Tommy also very mindful of cost and how and where my money would be better spent. I really feel I am in great hands with Tommy and his team. They have been patient with my revisions. And most importantly, they made me feel that they fully understood the importance this patent is to me. It has been a great and comforting pleasure working with Tommy.

G.L.

Read All