Innovation Asset Blog

Filing Patent Applications Ahead of New U.S. First to File System Can Be Advantageous

The America Invents Act was signed into law in September 2011. One of its most significant provisions is the change from granting U.S. patents to the “first to invent” to granting them to the “first inventor to file.” This change becomes effective for patents filed on or after March 16, 2013. In a March 12, 2012 piece published in Fast Company, John Villasenor points to some benefits to be gained from continuing to file patent applications right now.

For one thing, prior to the changeover, you can still prevail as the first inventor over someone who files an application before you, and utilize the lab notebooks and other records of your invention as proof. In other words, it is still possible that invention ideas currently in your pipeline can also be in a competitor’s pipeline and they could file before you – all prior to March 16, 2013. This is reason enough to continue capturing internal invention disclosures and filing applications under the current system.

Also, according to Villasenor, inventors who file their applications prior to the first-to-file effective date “can extend the advantages of the first-to-invent system for years into the future.” What he is referring to is the still-intact system of filing “continuation” applications. In essence, these are “parent” and “child” filings - the “parent” being the primary or base application which establishes the key filing date. The “child” application builds off of the parent – by adding new claims or a new invention carved out of the parent invention. If done properly, says Villasenor, an inventor who files before March 16, 2013 can maintain “a chain of multiple, interconnected patent applications over a period of many years” and be grandfathered into the “first to invent” system.

In light of these potentially value-adding benefits, Villasenor observes that “[c]ompanies should proactively manage their intellectual property (IP) strategy between now and next March to make the most of this opportunity.”

Peter Ackerman

Peter Ackerman

Founder & CEO, Innovation Asset Group, Inc.