11 March, 2013


First to File – Are Your Ready?


The America Invents Act (AIA) became effective on September 16, 2011 and is a groundbreaking piece of US patent legislation.  Conventus Law first reported on this on 4 October, 2011 – “Asia Pacific – Leahy-Smith America Invents Act – The First Major Overhaul to the Patent Act in Almost 60 years.” The most significant change will take place on March 16, 2013 – the dreaded “First to File” amendment, which finally aligns (somewhat) US patent law with patent laws around the rest of the world.  We leave aside the constitutionality debate to the US constitutional experts and focus instead on the practical implications for law firm clients.


In short, US patents for inventions will no longer rely on a “first to invent” legal process, whereby inventors can submit documented evidence of being the first to invent and diligently reduce the invention to practice.  As of March 16, 2013, whoever files first in the US “wins” the patent, even if the “real” inventor files the next day. The most important exception to this rule is a “first to publicly disclose” exemption whereby the real inventor has a one year grace period to file for a patent after first publicly disclosing the invention.  This exception differentiates the US from the rest of the world as all other jurisdictions we surveyed did not provide for this exemption.


Under the old system, inventors could more or less take their time tinkering with inventions and tweaking refinements whilst their patent attorneys could have the leisure of completely surveying the competitor landscape before carefully crafting tightly worded applications for submission to the US Patent and Trademark Office (USPTO). 


Filing quickly and making applications complete will henceforth be the challenge. The fine balancing act of disclosing too much versus a successful application will depend more than ever on the drafting skills of a savvy and experienced attorney working hand in hand with an organised and cooperative client.


As with any change in the law, there will be a period of uncertainty, risk and challenge.  It is expected that the prior user right (one who has been commercially using the invention for more than one year still retains prior use rights) will be the subject of interesting litigation.


Clients with substantial assets invested in R&D need to be advised to undertake a company wide patents audit, gap analysis and file before March 16 (even provisional applications) to retain their “first to invent” patent rights in the US.  Afterwards, staying current with competitor developments becomes more important than ever.



Best practice tips including tweaking internal “Invention Disclosure Forms” to streamline early systemic reviews, implementing procedures to assist early decision making with respect to which jurisdictions to file (often a commercially driven decision) and considering the purchase of vendor software packages to manage and monitor intellectual property.  It has been suggested that filing multiple low cost provisional applications will be an effective way to secure “First to File” rights in the US.


For more information, the USPTO is hosting a free webinar on the subject of “First Inventor to File” on March 15, 2013 at 10 am Eastern Daylight Time. The link can be found here: http://www.uspto.gov/aia_implementation/index.jsp


Don’t miss it!


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This article was written by Helena Hu


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Helena has over 10 years’ of work experience in multinational financial institutions, including Janus Capital, Allianz, AIA and Chow Tai Fook. Her roles ranged from Regional Counsel to Legal Consultant. She has experience in private equity, IPOs and compliance.


Helena currently works with law firms and in-house legal departments on short term projects. 


She is based in Hong Kong and she speaks English, Cantonese and Mandarin. 


You can contact Helena on [email protected] 



Other blog posts by Helena


An Evening With The Director Of Public Prosecutions.









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