On February 13, 2013, the United States Patent and Trademark Office (USPTO) published final rules implementing the “first-inventor-to-file” system. Set to take effect March 16, 2013, the “first-inventor-to-file” system is one of the hallmarks of the Leahy-Smith America Invents Act (AIA), signed into law by President Obama in 2011.
Before making the switch, the USPTO was the lone national patent office using a “first-to-invent” system. With the U.S. patent system now in greater harmony with those of major American trading partners using “first-to-file” systems, U.S. patents should be more consistently enforced. “Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries,” commented Acting Director of the USPTO Teresa Stanek Rea.
In the old “first-to-invent” system, when an inventor conceives of an idea and works diligently to reduce it to practice, the date of conception acts as the date of invention. Interference proceedings would be used to resolve priority among near-simultaneous inventors. Under the new “first-inventor-to-file” system, however, priority is determined by filing date rather than invention date, thus eliminating the need for interference proceedings. Derivation proceedings will be used though to ensure that the first person to file the patent application is in fact an original inventor.
More information on the “first-inventor-to-file” final rules and examination guidelines will be provided by the USPTO at a public training session to be held on March 15, 2013 at its headquarters in Alexandria, Virginia. Details on access to a webcast of the training session are available on the AIA micro-site at www.uspto.gov/AmericaInventsAct.