United States: Last Chance For “First-To-Invent” Patent Protection Rapidly Approaches

On March 16th, the final provisions of patent reform under the Leahy-Smith America Invents Act of 2011 go into effect, transitioning the United States from a “first to invent” patent system to a “first to file” patent system and broadly expanding the scope of prior art, i.e., information available to the public, that can be used to reject patent applications filed on and after that date. The impact of these changes should motivate inventors to file new patent applications by March 15th to take advantage of the benefits of the present system.

Patent regimes around the world presently fall into two categories. “First to file” regimes offer patent protection to the first inventor to file a patent application. “First to invent” regimes offer patent protection to the first person to conceive of the invention and diligently pursue patent protection for it, even if a later inventor filed an earlier patent application for the same invention. Beginning March 16th, the United States will cease being a “first to invent” regime and become a “first to file” regime.

The new provisions will also broaden the scope of prior art under United States patent law, making it more difficult to obtain a patent. Patent applications filed on or after March 16th covering inventions that are known, used, in public use, or offered for sale outside the United States will no longer be patentable. United States patents and patent application publications that originated with a foreign patent application, including international applications filed under the Patent Cooperation Treaty (PCT), will now be prior art as of their original foreign filing date, instead of their filing date here in the United States.

Together these changes provide a very good reason to consider filing a non-provisional patent application including a full disclosure and claim set by March 15th. Provisional patent applications, which typically include much less disclosure and often omit claims, filed before the deadline may or may not provide the benefits of the “first to invent” regime to subsequently filed patent applications based on the provisional.

Goodwin Procter LLP is one of the nation’s leading law firms, with a team of 700 attorneys and offices in Boston, Los Angeles, New York, San Diego, San Francisco and Washington, D.C. The firm combines in-depth legal knowledge with practical business experience to deliver innovative solutions to complex legal problems. We provide litigation, corporate law and real estate services to clients ranging from start-up companies to Fortune 500 multinationals, with a focus on matters involving private equity, technology companies, real estate capital markets, financial services, intellectual property and products liability.




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