First to file is coming

Under the America Invents Act, the USPTO is changing from a first to invent regimen to a first to file regimen effective March 16, 2013.  So what does that really mean?  In most cases, it will not mean anything.  I.e., in the vast majority of cases, this will not have any effect.  This is because it is not in issue in the vast majority of cases.  The only time it matters is when two applicants have claims that are identical to one another (this typically occurs when one learns of the other and copies the claim exactly to begin what are called “interference proceedings”).  The USPTO then receives evidence from the parties and determines who can prove earliest invention.  That party is allowed to pursue the claims and the other is barred from doing so.  However, even when the inventions are similar, many times there are enough differences that they can be distinguished from one another and coexist.  I.e., the “losing” party can still get a patent; they just have to have narrower claims in doing so.

Under the new regimen, once a conflict is found, whoever has the earliest filing date will be granted the right to pursue the patent and the other party will lose any right to do so.  However, because this effects few applications, it is likely that, in most cases, the first filer will also be the first inventor.  Nevertheless, the biggest beneficiary of these changes will be large filers.  This is because they tend to file on anything that they are considering making or selling.  That means that their internal process will often lead to applications being filed in a timely manner, even when they do not deem the patent application a high priority.

In contrast, most small businesses are very selective about what they file.  They have less capital to throw into the patent process and so have to be more careful about where those resources get allocated.  Because of this, they tend to delay filing more often, to make sure that they will receive sufficient return on investment.

The lesson that inventors should take from this change is to realize that once a determination is made that a patent is to be pursued, they should act aggressively to make sure that their rights are protected in a timely manner so as to avoid any potential problems.  Otherwise, delays will become more costly for businesses and inventors.

About Dustin Call (26 Posts)

Registered with the USPTO, first as a patent agent and then as a patent attorney, since April 10, 2006 and licensed in Washington as an attorney since November 16, 2006. I have worked for a large firm and now have a solo practice.

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