“First inventor to file” change
Is an issue NOW
Inventors and technology companies may think they’ve got some breathing room until they need to really focus on the new “first inventor to file” provision in the America Invents Act (AIA) that takes effect March 16, 2013.
Section 3, paragraph (n) of the AIA reads as follows:
(n) EFFECTIVE DATE
1. IN GENERAL- Except as otherwise provided in this section, the amendments made by this section…shall apply to any application for patent, and to any patent issuing therefrom, that contains or contained at any time –
A. a claim to a claimed invention that has an effective filing date…that is on or after the effective date described in this paragraph or
B. a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.
If an inventor files an initial patent application on March 16, 2013 or later, that date will be the “effective filing date” and the “first inventor to file” provisions will apply. No surprises there.
Or if the inventor first files an initial patent application on or before March 15, 2013, the old Patent Act of 1952, and the “first to invent” standard, will apply. Also no surprises there.
The complication arises where a new patent applicant claims priority to a previously filed patent application. If even a single claim in the new patent application isn’t entitled to a filing date before March 16, 2013 then ALL the claims in that new patent application will be considered under the new “first to file” rules.
An inventor who realizes this too late can’t even escape the impact of the change by later deleting that one claim, since the AIA applies to any patent application that contained a claim with an effective filing date on or after March 16, 2013 at any time.
The lesson for inventors (and the companies that employ them) is to not file sketchy claims now on the assumption that they can be updated after the AIA takes effect without the risk of losing “first to invent” status.
As discussed in a previous blog post, there’s likely to be a rush to the patent office as the deadline approaches, and patent lawyers are likely to get swamped.
If you’ve got a patentable invention in the works, consult a patent attorney now to avoid being left waiting at the end of the line.