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January 22, 2013
Patent Protection - Race to File Now or Wait Until After First-to-File System Goes into Effect
The final stage of patent reforms in the United States mandated under the American Invents Act (AIA) will go into effect on March 16, 2013. The most impactful of these reforms will be the shift from a first-to-invent system to a first-to-file system.

Under the new, first-to-file system inventors will have to be much more cognizant about filing early and filing often. After March 16, 2013, inventors will not be able to rely on the conception date for their invention. Under the current system, inventors are permitted to submit evidence showing their conception date was before another party's filing date - hence the reason it was deemed a first-to-invent system.

In addition, the U.S. Patent Office will then be able to rely on any published documents, offers for sale, or actual sales that occurred anywhere in the world as grounds for determining an invention's novelty or non-obviousness. Currently, the scope of prior-art references the U.S. Patent Office may rely on is significantly more restrictive.

From now until March 16, 2013, inventors should review their records and companies should meet with their engineering and research departments to determine what can be filed. The litmus test for this determination is two-fold: 1) you are not aware of anyone else having already invented it, and 2) whether the invention can be described in enough detail to allow someone of skill in the art to make and use the invention. It is certainly advisable to consult patent counsel to help with this determination, but generally if this litmus test can be met or at least appreciably met then filing before March 16, 2013 would more than likely be beneficial.
After the first-to-invent system goes into effect, the strategies for when and what to file should be reviewed with patent counsel. For example, inventors may want to consider doing global patentability searches that contemporaneously coincide with their projected filing date; whereas under the current system it may have been more cost effective and strategically beneficial to put the onus on the U.S. Patent Office to perform the patentability searches after filing.

Foster Pepper has a team of highly experienced patent attorneys available to provide guidance on the new patent law reforms and help with any filing decisions that may be strategically advantageous during the waning days of the first-to-invent system. For more information, please contact Richard Vershave in the Foster Pepper Intellectual Property practice group.