On March 16, 2013, the final provisions of the America Invents Act (AIA) will go into effect. Under these provisions, the U.S. patent system is changing from a "first-to-invent" system to a "first-to-file" system. Accordingly, the first inventor to file a patent application will normally prevail over a second inventor who filed later in time, regardless of which inventor was first to invent. Any patent applications filed before March 16, 2013, will fall under the current law, while those filed on or after March 16 that do not properly claim priority to an application filed before that date will fall under the new law.
We believe that, in most situations, it will be advantageous to file any new patent applications before March 16, 2013, for inventions that are sufficiently developed. This will eliminate some potentially negative consequences of the new law. Under the new law, for example, these changes will occur:
As with many changes in the law, there is some uncertainty surrounding the full interpretation of the new law. For example, there may be some ambiguity in terms of what actions and events may qualify as prior art. However, it will most likely take years of court decisions before such issues are resolved. Given these ambiguities, there are a few rare situations in which it is conceivable that it may prove advantageous not to file before March 16 even if the invention is sufficiently developed. We recommend that our clients consult with their Fitch Even attorneys for more details.For the most part, however, given the known changes that the new law will bring, we believe it will be an advantage to accelerate the filing of most patent applications to sufficiently developed inventions to occur on or before March 15, 2013. This recommendation extends not only to domestic clients, but also to clients outside the United States. For those patent applications filed outside of the U.S. on or before March 15, 2013, corresponding applications can be filed in the U.S. within the one-year anniversary of the initial filing. If priority is properly maintained, such applications will continue to be handled under current law.For more information, or if you have any questions, please contact your Fitch Even attorney or Fitch Even partners Mark W. Hetzler or Jeffrey A. Chelstrom.
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