Effective March 16, 2013, the United States will join the rest of the world and move to a first-to-file patent system.   The change comes as the result of the passage of the America Invents Act (AIA) signed into law by President Barack Obama on September 16, 2011.  The United States was the last country to make the switch to a first-to-file patent system after Canada and the Philippines made the move in 1989 and 1998 respectively.

Under a first-to-file patent system, the patent office will award a patent to the first inventor to actually file their patent application without regard to who actually invented something first.  Under the previous first-to-invent patent system, an inventor had the option to prove to the patent office their date of invention and could be awarded a patent, even if their competitor filed their patent application first.  This procedure was termed an "inference proceeding" at the US Patent and Trademark Office and will soon become obsolete.  Proving your date of invention under an inference proceeding was one of the reasons why researchers are required to keep detailed lab notebooks that should be signed and witnessed regularly.

Supporters of the change to a first-to-file patent system claim the move will reduce risk and uncertainty in the patent process and lead to increase investment in early stage technologies.  They also claim it will harmonize the US system with the rest of the world.  Critics of the move claim the change will penalize independent inventors and small businesses who may not have a patent attorney on staff or be able to afford frequent patent filings to protect their inventions.

Update - Will this help or hurt me?

Many of my clients are under the impression that moving to a first-to-file patent system will help them.  However, in my opinion, the first-to-file switch will actually hurt most of the people I work with.  My clients are typically independent inventors and not companies.  For this reason, they do not have the money to file frequent patent applications quickly on their new ideas.  Under the old first-to-invent system, my clients would have had a fighting chance to prove to the patent office when they invented something.  This was especially useful if another inventor or company filed a patent before my client we could at least have the opportunity to prove that we invented it first.  Under the new rules, we will lose that option and the companies and inventors with the most amount of money to spend on quick patent filings will end up winning.  For this reason, I suggest most people try to get their patent filed before March 16, 2013 in order to have the old first-to-invent rules apply to their invention.

Please contact me to learn more.

What is a “first-to-file” patent system? was last modified: February 9th, 2013 by Brad Fach
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Free USPTO Provisional Patent Template

My personal provisional patent template used to file over 200 patent applications with the USPTO