Get Thee to the Patent Office, and Quickly Too: The Importance of Filing U.S. Patent Applications by March 15, 2013

February 12, 2013, 10:28 AM

The changeover of the U.S. patent system on March 16, 2013, from one in which priority of rights to a patent is determined based on who first conceives an invention, to one in which it is determined by which inventor files the first application on the invention, will be disadvantageous to many owners of rights in patentable inventions. This means that for inventions that have progressed to the point where valid patent applications can be filed on them, it will be advisable in many cases to get those applications filed on or before March 15, 2013, so they will be subject to the old rules rather than the new ones established by the America Invents Act (AIA) that come into effect on March 16.

With admitted oversimplification, I offer the following summary of reasons why filing a patent application on an invention before the March 16, 2013 transition date will generally be advantageous:

-- Under the current first-to-invent system, a U.S. patent applicant can overcome certain prior art objections to patentability by proving that the applicants conception of the invention predated the prior art in question
swearing behind the prior art. This will no longer be possible under the new first-inventor-to-file system.

-- It will generally be more difficult to obtain issuance of a U.S. patent under the new AIA rules going into effect on March 16, because:

  • the new rules greatly expand the universe of prior art that can be cited to block issuance of a U.S. patent;
  • the new rules severely limit protection afforded by present law against publications, public uses or on-sale activities occurring during the one-year grace period preceding a U.S. patent application constituting prior art that could block issuance of a patent from the application; and
  • the statutory bars to patent availability based on public use, sales or offers to sell under current law are relevant only if they occur in the United States, but under the new law such activities anywhere in the world will constitute prior art that could block patentability.
-- A new procedure for post-grant review of issued U.S. patents during the first nine months after their issuance will make it easier to challenge the validity of patents issuing from applications filed after March 15.

-- Fees for filing, searching and examining a non-provisional U.S. application will be subject to a 27% increase effective March 19, 2013 (raising from $1,260 to $1,600 for large entities).

The potential impact of these changes may not make it a priority for all inventors to rush to get their patent applications filed before the March 16 transition date. But at least those engaged in R&D in a crowded field, or who know of R&D activity by others in the same field as theirs, or who have engaged in long-term work on an invention but never quite gotten around to filing a patent application on it, should give serious consideration to doing everything possible to assure that their patent applications are considered under the old first-to-invent rules rather than the new ones.

Some practical steps that can be taken to achieve this are:

-- For any invention on which no patent application has yet been filed, but which has progressed to the point where a valid application can be filed on it, prepare a provisional application and file it with the U.S. Patent and Trademark Office on or before March 15, 2013. This will give any subsequent application that is entitled to the priority date of the provisional application the benefit of being subject to the current rules rather than the new ones coming into effect under the AIA.

-- Do everything possible to assure that each such provisional application is as complete and detailed as possible; in other words, that it is done with the same level of care and attention as would be given to a non-provisional application prepared on the same subject matter (minus claims). This approach is advised because any new matter added to a non-provisional application based on a provisional one will not have the benefit of the provisional filing date, which is something that can happen when provisional applications are filed on a quick and dirty basis. If time and circumstances are an issue, getting the best possible provisional application prepared and filed on or before March 15 will be preferable to getting a more perfect one filed after that date.

-- For provisional applications filed within the last year that are awaiting preparation and filing of follow-on non-provisional ones, do everything possible to complete and file the non-provisional applications before March 16. If this cannot be done, an alternative would be to review progress on the invention covered by the previously filed provisional application, identify important developments and enhancements on the invention since the provisional filing date, and file a new provisional application covering those on or before March 15. --Robert E. Smartschan