March 16, 2013 begins the new era of First Inventor to File, enacted under the America Invents Act. Information regarding the change is abundant, and perhaps overwhelming. But there is a key determination to be made right now: whether to file an application by March 15, 2013 in order to remain under the current First to Invent law.
There are 2 key reasons to file some patent applications by March 15, 2013:
- There is currently less prior art available to patent examiners to reject an application;
- Any patent issuing on the application will not be subject to the new Post Grant Review proceeding (a proceeding with broadened grounds for invalidity attack).
There are 3 main scenarios that may warrant filing by March 15, 2013:
- A provisional application is already on file, but more subject matter is ready to be added to further define the invention in a non-provisional application;
- A non-provisional application is already on file, but a new continuation-in-part application or an entirely new application is desired to add new matter to the original invention;
- An invention is ready to be described and filed in the form of a new provisional or non-provisional application.
There are 2 scenarios in which filing by March 15, 2013 may not be needed:
- Applications (provisionals or non-provisionals) are already on file with the Patent Office, and no new matter need be added;
- Filing new continuing applications with claims that are fully supported by a parent application filed before March 16, 2013.
These points are guidelines to help with making informed decisions in the coming weeks. Every situation is different and we understand that the patent laws are not the only driving factor in filing decisions.© MICHAEL BEST & FRIEDRICH LLP