Important Things You Need to Know About the Upcoming Changes to the U.S. Patent System

As we have previously reported, on March 16, 2013, the United States will change from a “first-to-invent” patent system to a “first-to-file” patent system. Given this and an impending fee increase, there may be significant advantages to filing patent applications before the changes take place.

Here are four other important things you should know about the America Invents Act of 2011.

What Does “First-to-File” Mean?
The first-to-file system awards a patent to the first of two conflicting persons who files a patent application for a particular invention. This is a major departure from prior practice in which the patent would have been awarded to the first person to invent the subject matter of the invention, even if that person was the second filer. The effects of public disclosure of a person’s own invention prior to filing a patent application by that person also changes after March 16, 2013.

Strategic Timing of Applications
Patent applications filed before March 16, 2013 retain the benefits enjoyed under the first-to-invent system. Generally speaking, this transitional effect counsels for filing patent applications before March 16th for inventions that were recently developed or that are currently under development. You should also give consideration to accelerated filing for inventions that were or will be publicly disclosed or offered for sale before March 16th.

The Problem with Incomplete Provisional Applications
A patent with even a single claim based on subject matter first disclosed in a patent application filed after March 16, 2013 subjects the entire application to the new first-to-file rules. As such, if you have a pending provisional application on file and you feel there is a possibility that the disclosure of that application will have to be supplemented with additional information before “converting” it to a standard or non-provisional patent application, we recommend that you strongly consider completing the conversion process before March 16th to take advantage of the sun-setting on the “first-to-invent” system. The same rationale counsels for seriously considering filing any contemplated continuation-in-part applications (applications that will include new material) before March 16th.

Fees
In addition, be advised that many U.S. Patent and Trademark Office filing fees are slated to increase considerably on March 19, 2013. Most notably, the base filing fee for filing a new patent application will increase more than 25 percent to $1,600 for large entities and $800 for small entities. Surcharges for excess claim fees also are slated to increase significantly.

Please contact your Boyle Fredrickson attorney if you have any questions or want to discuss filing before the March 16, 2013 changeover.