What Does Upcoming Switch to First-to-File Patent System Mean for Inventors?

On March 16, 2013, the United States will officially move from a “first-to-invent” system to a “first-inventor-to-file” system. The switch is one of the most significant changes under the America Invents Act (AIA). Under the new patent rules, the first filed application for an invention has priority over subsequently filed applications, regardless of which applicant was first to invent.

For inventors, it is going to be all about timing. Applications filed before March 16, 2013 will follow the old system under which the first to invent will often prevail. However, applications filed after the AIA is implemented that do not claim priority to an application filed prior to March 16, 2013 will be prosecuted under the new law.

Given the potential downsides to the new first-to-file system, inventors who are prepared to file before March 15, 2013 are encouraged to do so. Below are a few important considerations:

  • It may be more difficult to obtain a patent under the new system. The new rules under the AIA expand the range of disclosures that will be considered prior art, making it more difficult to successfully secure a patent. The existing one-year grace period, which eliminated some prior art references, will also be limited under the new rules.
  • It may also be more difficult to defend a patent application because patents filed under the new system are more susceptible to invalidity challenges. As we have previously discussed on this IP Law Blog, the new post-grant review proceedings allow patents issued under the first-to-file system to be challenged in the PTO within nine months after they are issued. Moreover, invalidity challenges may be based on a wide variety of grounds that were previously reserved for litigation.
  • There will be a learning curve for patent applicants, USPTO examiners, and the courts, all of which are accustomed to the old system. Therefore, in order to avoid the uncertainty that will likely accompany the firsts several months of the first-to-file system, it may be advisable to act now.

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