The First-Inventor-to-File rules, the final changes to the U.S. patent system under the America Invents Act (“AIA”), are scheduled to go into effect on March 16, 2013. If you currently have any applications “on hold,” are considering converting provisional patent applications to non-provisional applications or filing continuation-in-part applications, you may want to consider doing so before March 16, 2013 to avoid the anticipated implications of the new system and its corresponding increased fees. Likewise, you should consider paying any outstanding maintenance fees prior to their scheduled increase on March 19, 2013.
First-to-File
On March 16, 2013, the United States is changing from a “First-to-Invent” system to a “First-Inventor-to-File” system. This change brings the United States patent system in line with that of most every other country. However, unlike most foreign countries, the United States has retained a one year grace period for an inventor’s own disclosures. This means an inventor having a later application filing date at the United States Patent and Trademark Office (“USPTO”), but an earlier disclosure within the one year grace period, can still prevail in a priority dispute over an application filed by another for the same invention in the intervening time, subject to some limited exceptions. It is important to keep in mind, however, that this grace period is particular to the United States and that any public disclosure will most likely result in the forfeiture of foreign patent rights.
Changes to Prior Art
The new system includes an expansion of the scope of what is considered to be prior art, which may make it more difficult to avoid some prior art. For example, under the current law, only sales and public uses which occur in the United States act as prior art. Under the new system, sales and public uses anywhere in the world can act as prior art.
Fee Increases
Another provision of the AIA is that the USPTO has been given fee setting authority. On March 19, 2013, the USPTO is implementing a new fee structure, and the overall fees required throughout the life of a patent will increase significantly. The largest increases are those for the examination fees (from $250 to $720), request for continued examination fees (from $930 to $1200 for the first and $1700 for each subsequent), extension requests (from $150 to $200 for the first month) and maintenance fees ($5,860 total over the life of the patent to $12,600).[1]
Post-Grant Review
A third significant effect of filing an application on or after March 16, 2013 is that any patent issuing from the application will be subject to a new Post-Grant Review (“PGR”) procedure. The PGR procedure will provide an opportunity for a third party to challenge a patent within the first nine months following its issuance. The third party can petition for cancellation of claims based on grounds related to invalidity, such as novelty, obviousness, written description, enablement, and indefiniteness.
Complimentary Discussion Addressing First-Inventor-to-File Rules
The USPTO is hosting a free informative forum via a web conference on Friday, March 15, 2013 from 1:00 p.m. to 4:00 p.m. EST. During this session, they will discuss the First-Inventor-to-File rules, examination guidelines, and the new fees that will take effect in March. For more details on this public forum, please visit the USPTO’s AIA Web page.
If you have any questions regarding the impact of these rule changes on your IP portfolio or actions you can take to protect the revenue your IP generates, please contact your Davis & Kuelthau, s.c. attorney.
[1] All quoted fees are for large entities. Small entities are generally entitled to a 50% discount.