How to Take Advantage of the "First-to-File" Patent System

There were big changes last year to who acquires protection. Here are answers to four common questions.

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By Kirby Drake

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The United States last year flipped the patent process, with a move to a "first-to-file" (FTF) system that, with a few exceptions, gives priority to the first applicant to file for protection on an idea. Previously, patent protection had been granted to the first person who invented something, even if someone else beat them to filing.

What does this mean for inventors? Now, more than ever, dragging your feet before you do an initial filing could be disastrous.

What's the background story? The United States isn't the first country to use a FTF system. In fact, it's one of the last. Congress adopted the FTF process as part of the larger America Invents Act (AIA) in 2011, and the new FTF system went into effect in March of 2013.

Related: Will the New Patent Law Kill the Garage Inventor and Startup?

What else does the new FTF system change? The FTF system also changes what may be used to reject a patent application (also referred to as "prior art"). Prior art can include patents and printed publications describing the invention, as well as public uses or sales of the invention and public availability of the invention (such as posting on the internet or an oral presentation or display at a trade show).

The critical inquiry here is whether the prior art was available before the earliest date that the applicant can claim priority with the patent application filing. Prior art can be something that the inventor did or it can be a third party. However, if the inventor discloses the invention one year or less before the effective filing date of the patent application, it cannot be used to reject the application. This one-year time period is often referred to as a "grace period."

How can I use the FTF system to my advantage? To maximize your benefits of the FTF system, you must do your homework. This means promptly identifying new inventions that may be potentially protected by a patent. Of course, the patent application should also be filed before anyone else files a patent application or publishes material related to the inventive subject matter.

Related: More Bad News for Patent Trolls

While time is of the essence in patent application filings, you don't want to be too hasty to file as this may result in a patent application having an insufficient, not fully formed, or overly narrow description of the invention. Applicants should still try to file as soon as a complete conception of the invention exists to minimize the possibility of another applicant filing earlier. Also, having the early filing date is important given the expanded classes of prior art.

What if I have an invention, but I'm not ready to file a full-blown patent application? Inventors can apply a provisional patent application that allows quick filing when the invention is in the early stages. This is helpful if an invention is about to be profiled in the media or public disclosure is pending at a trade show or event. Filing of a provisional patent application establishes a filing date for the invention, which may improve the chance of being first to get protection on the invention. It can also reduce the prior art that may be used to reject the patent application. Finally, it gives the applicant up to one year to file a nonprovisional application for review.

However, the priority filing date of a provisional application is only good for the subject matter disclosed in the provisional application. If further inventive subject matter is created between the time when the provisional and non-provisional applications are filed, you may consider filing multiple provisional applications to lock in filing dates for the inventive subject matter as it is being developed. If no substantial changes to the inventive subject matter are anticipated, you may be ready to file a nonprovisional application and this will get the application in the queue to be examined earlier in the process.

The FTF system will evolve as the U.S. Patent Office and courts continue to adapt to the system. Staying on top of the rules, and using them to your advantage, will be increasingly important to keep a competitive edge in this new frontier of first-to-file.

Related: Keeping Your Intellectual Property Safe and Sound

Kirby Drake
Kirby Drake is a partner at Klemchuk Kubasta LLP, an intellectual property law firm based in Dallas. She is well versed in all areas of intellectual property law, including trade secret, patent, trademark, copyright and confidential information matters. Drake concentrates her practice on patent prosecution and litigation related to a variety of technologies.

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