Quick! It’s Now “First to File” in the US!

by: Natalie Giroux

Did you know that March 16th marks a major milestone for patent reform in the USA?  On that date, the USA patent system will transition from “first to invent” to “first to file” (the way it’s done in the rest of the world already).  If you have intellectual property to protect, this change matters to you.

Simply put, before March 16th , another inventor could invalidate one of your applications or patents by proving they had invented it before it was filed. After March 16th, the first inventor to file the patent owns the IP regardless of who might have invented it earlier (assuming, of course, there’s no prior art to invalidate it).

What does this mean? Starting now, you need to file a provisional application whenever a new idea emerges then keep filing additional provisional applications as the idea evolves.  The provisional application must be detailed enough to write claims later (see my previous post).  Remember, your protection against someone else filing before you is only as good as the details included in the description within the provisional application!

Leading up to March 16th, I recommend converting as many of your pending provisional applications as you can to conventional applications.  That way they will remain subject to the old “first to invent” rule.  More importantly, be extra careful about talking about your ideas in public and without a proper NDA in place! If you do decide to talk to people about your ideas, keep dated records of those conversations.

Now that it will soon be “first to file” rather than “first to invent” in the US, you should consider being first to talk to your IP strategist on the best course of action going forward.

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