In the past, the first person to invent in the U.S. obtained a patent for an invention even though another person filed an earlier patent application. That will change on March 16, 2013 when the U.S. switches to a first-to-file patent system. The first-to-file system puts the United States in step with the rest of the world, which already operates under this system.
This begs the question: Given the choice, should you try to file any applications before, on or after March 16, 2013, the effective date of the new law? Because the first-to-file system expands the universe of prior art that can be cited against an applicant; it makes sense to file applications before the effective date.
Therefore, with less than four months until the first-to-file changes go into effect, it is important to analyze your patent portfolios and determine the filing you should make prior to March 16, 2013. It is particularly important to evaluate items falling in the following categories:
- Provisional applications filed after March 16, 2012, and especially those that: Technology that will form the basis for a continuation-in-part application and will contain new matter viz-a-viz the parent application
- May not have a full disclosure or any claims for the subject matter of interest
- Will include new matter, including any new matter that will be claime
- Important technology under development that is near completion and ready for patenting (where a full application can be prepared)