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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).

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