13 Dec

From “first to invent” to “first to file” (USPTO)

*Must read*

My friend Evin pointed me to a new ruling that goes into effect March of 2013. I wasn’t aware of this *very important* change to the US Patent and Trademark Office (USPTO) that changes our patent and trademark system “from first to invent” to “first inventor to file”:

“The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published a proposal to amend the rules of practice in patent cases to implement the “first-inventor-to-file” provision of the Leahy-Smith America Invents Act (AIA).

The first-inventor-to-file provision converts the United States patent system from a “first to invent” system to a first inventor to file system. The first-inventor-to-file provision, which takes effect March 16, 2013, also alters the scope of available prior art to apply against a claimed invention in determining the novelty and obviousness of the claimed invention.

Don’t wait; file sooner rather than later. Consult your patent attorney.

Read the actual USPTO announcement: USPTO Publishes Proposed Rules Governing First-Inventor-to-File.


3 thoughts on “From “first to invent” to “first to file” (USPTO)

  1. This means companies with lots of money can patent things others have actually invented (but can’t afford to patent, or chose not to, e.g. universities), like e.g. Apple is already heavily doing whenever they get a chance, and for things that are not even patentable according to European rules (but seemingly US ditto). The question is whether prior art will be considered then.

  2. As far as I know USA is one of the last to adopt first-to-file, so any protection against what I describe is mainly through prior art.

    I guess the main difference is that EU is less tolerant regarding what can be patented. Pure designs can’t be. There has to be some form of functional gain, but also here it’s a gray area.

    Patents are expensive and take a long time to process, so it’s not for everyone, and without funding a startup needs to sell other things (here it’s often consulting) while the patentable ideas are processed.

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