Guest Column

And the winner is: the first to file — or publish

March 22, 2013
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The new patent law that went into effect March 16 has been referred to as a “first to file” patent system, in contrast to the prior “first to invent” system. It may be more helpful to refer to it as “first to file or publish,” meaning, with one exception, a patent application must be filed first and before anyone else publishes it.

Under prior law, “the first to invent” was the standard. That meant not only could you prevail in an interference with another inventor who may have filed an application prior to you, but also you could overcome a prior art reference by proving you had invented your claimed invention prior to the date of the reference. That is no longer true. Now, with one exception, a prior publication, or a prior filed U.S. patent application when published, is prior art.

The one exceptionis you do have one year from your own publication, public use or offer for sale within which to file your U.S. patent application. If you have made your invention public in this way and file within one year, you avoid any intervening third-party prior art, including any intervening third-party U.S. patent application.

The one year exception does not apply if you want to file your patent application in foreign countries, in which case you must make certain your U.S. or international patent application is filed before the invention is made public in any way. Then your international or other foreign applications must be filed within 12 months of your first application (six months in the case of design patents). Secondly, there are some foreign countries, most importantly Taiwan, where your foreign patent application should be filed at the same time as your U.S. or international application — before the invention is made public in any way.

The use of provisional patent applications will increase but not for reasons many people think. Obviously, the new patent law creates incentive to file a patent application on your invention as soon as possible. Many people think filing a provisional patent application is a quick and inexpensive way of preserving an early filing date. That view is a trap and not a good reason to file a provisional patent application. However, the fact that a well-written provisional patent application does give you a filing date and up to one year of application pendency without triggering your 20-year patent term is a valid reason to start with a provisional patent application in some circumstances.

A provisional patent application serves no purpose but to give you a filing date. It is never examined, and it never becomes a patent. However, if you file a non-provisional patent application within one year of your provisional filing date, it will be given the priority filing date of your provisional patent application, but only to the extent your provisional application includes a disclosure that enables a person of ordinary skill in the art to practice the invention you claim in your non-provisional application. A provisional patent application that does not include an enabling disclosure for your later filed non-provisional application is at best a waste of money and at worst a trap that lulls you into a false sense of security and causes you to lose your patent rights to intervening prior art.

A provisional application must be carefully prepared. While it is not necessary to include the “claims” that define the scope of your invention and are required for your later filed non-provisional application, you are poorly advised if patent counsel has not thought through what those claims should look like. The cost of preparing a well-written provisional application may be a little less than a non-provisional application but not substantially less.

Nevertheless, an important reason to file a non-provisional applicationis that it gives you a filing date without starting the clock on your 20-year patent term. The term of your patent, subject to some possible extension for prosecution delay caused by the patent office, is 20 years from your priority filing date, not from your patent issue date. The one exception to that is the filing date of your provisional application. Even though your non-provisional application filed within one year of your provisional is entitled to the earlier filing date, it is the filing date of the non-provisional that starts the 20-year clock. That results in an additional year of pendency.

Whether to file a provisional or non-provisional turns on whether the additional year of pendency would be helpful or harmful to your commercial interests. If your invention is ready to go to market, and if your industry is one in which new products are quickly imitated, you would probably be best served by filing a non-provisional application from the outset. However, if it will be months or even years before you get to market, or if you are an individual looking for an investor or a company to license your invention to, you are best served by filing a well written provisional application first.

James A. Mitchell is an attorney with Mitchell Intellectual Property Law PLLC in Grand Rapids. He can be reached at jamitchell@mitchelliplaw.com.

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