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US Changes to First-to-File Patent System

In September 2011 we reported that the America Invents Act (AIA) had been passed in the US. This bill was designed to reform the US patent system, with its provisions being phased in over a period of 18 months.

On 16 March 2013, one of the major changes brought by the AIA will come into force: the change from the current First-to-Invent system to a First-to-File system. The US is presently the only patent system which does not work on a First-to-File basis, and this change will therefore bring the US system into closer alignment with other patent systems around the world.

Under the current First-to-Invent system, the first person to invent a certain technology is entitled to a patent for it, even if someone else invents the same technology later but files a patent application first. The change to a First-to-File system means that, regardless of who was first to invent a particular technology, the first person to file a patent application for it will be entitled to the patent.

All patent applications which have a priority date falling after 16 March 2013 will fall under the new law. For pending applications, the old law will continue to apply providing that all of the claims in the application are entitled to a priority date of before 16 March 2013.

However, if at any point during the pendency of the application a claim is introduced which is not entitled to a priority date of before 16 March 2013, then the application will irrevocably change to the new law.

In many cases, particularly where a patent application is being pursued in a number of countries and so is being examined under the First-to-File system elsewhere, it is likely that this change will not make a material difference to the filing strategy or to the progress of a pending patent application. However, there may be situations in which it is desirable for a pending application to fall under the old law and, in such cases, it will be important to monitor any amendments which are made to the claims during prosecution to ensure that they do not introduce subject matter which is not entitled to the relevant priority date.

There is likely to be a significant increase in patent filings at the US Patent and Trademark Office in the run up to the law change, as applicants seek to have applications examined under the old law.

If you have any queries about this change or how it may affect your own patent applications, then please contact us and we will be happy to discuss it in more detail.
 

AdamsonJones

11 February 2013

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