Transitioning to a First to File System - Presented by Suffolk Law School

As part of the Suffolk Law School Podcast Series, Leigh Martinson, of McDermott Will & Emery, recently spoke on the America Invents Acts' transition from a first-to-invent to a first-to-file system.

What Does the Transition Mean and What Are the Consequences?

Mr. Martinson points out that transitioning to a first-to-file system means companies will be forced to rethink their patent strategies.  Now, companies will likely rush to the Patent Office instead of sitting on ideas for an extended period of time.

Mr. Martinson also underscores the elimination of interference proceedings and the expanded scope of prior art now assertable against patents. The ability to "swear behind" references has been eliminated, and companies will now be required to closely monitor/track prior art and publications.

How Will Patent Laws Change; Particularly, 35 USC §§ 102, 103?

In his discussion, Mr. Martinson takes a closer look at the effects on §§ 102, 103. He points out that § 102 has been completely rewritten, with the exclusion of subsection (e). As for § 103, though there is not much change, US practitioners are warned to be mindful in arguing obviousness. Comparing the "obviousness" standard to Europe's "inventive step" standard, Mr. Martinson notes that the two standards could provide a practitioner with a difference in the scope and content of prior art.

Listeners can access Mr. Martinson's complete podcast, Transitioning to a First to File System, at Suffolk University's  Intellectual Property Law Podcast Series - IP Law Podcast Series.

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