Filing and Prosecution Strategies for AIA First Inventor to File System

Although the America Invents Act (AIA) was signed into law in September 2011, the “first inventor to file” provisions did not immediately take effect.  However, they will take effect in less than two months.  Are you ready?

The shift to a first inventor to file system represents a significant change in U.S. Patent Law that is intended to better harmonize U.S. standards for patent eligibility with the rest of the world.  Under first inventor to file, as between two competing inventors who come up with the same invention, the first one to file a patent application will be eligible for a patent.  Under the existing “first to invent” system, the first inventor to reduce an invention to practice is entitled to a patent unless a competing inventor conceived of the invention first and was diligent in reducing the invention to practice from the time the first inventor conceived of it.

Although the change in the law is significant, it is not clear that it will necessitate any fundamental shifts in how companies prepare and prosecute patent applications.  However, some changes in filing and prosecution strategies are advisable.

Clearly, it is advisable to file patent applications as early as possible under the first inventor to file system, but that has also been the case under the first to invent system.  Under the first to invent system, if two competing inventors seek patents for the same invention, interference proceedings are used to determine which inventor has priority, and therefore, is entitled to the patent.  Interference proceedings are costly litigation proceedings handled by an administrative law judge in the Patent Office.  Thus, it has always behooved inventors to file for patents early because interferences are a difficult and sometimes cost-prohibitive remedy.  In addition, interference proceedings require conflicting patent claims, and the first to invent system prohibits adding conflicting claims to a patent application if they were published more than one year earlier in another inventor’s application.  As a result, under the current system, the first inventor may still be foreclosed from obtaining patent claims that he would otherwise have been entitled to if he was unaware of their earlier publication in a  competing inventor’s patent application.

Because of the ever increasing globalization of the economy, many companies seek patent protection outside of the United States, which means that they have been living with a first to file system for some time.  For these companies, the incentives to file quickly and beat competitors to the Patent Office have already existed because of the importance of foreign patents to their businesses.

That said, there are some things companies can do to better position themselves against their competitors under the first inventor to file system.  Because most, if not all companies, are operating under some sort of resource constraints, under the first inventor to file system, it will be more important to develop a system for prioritizing the preparation and filing of patent applications.  Unless money and time are unlimited, it is not possible to file everything more quickly simply because the law has changed.  Here are some questions that can be used to prioritize filings:

1.  How Active Are Competitors in the Technology?—Some technologies are highly competitive from a patenting stand point, with  multiple players working on solving the same problems at the same time.  In this type of environment, it is more likely that multiple inventors will come up with the same invention at the same time.  Thus, a higher priority should be assigned to filing quickly for inventions in highly competitive technology areas.

2.  How Important Is Patent Protection for the Invention?  Of course, this is a question that should be asked under the first to invent system as well.  However, one consideration in prioritizing filings is the significance of not obtaining a patent if a competitor files first.

 3.  How Damaging Would It Be If Another Patented the Invention?  This question relates to number 2, but considers it from a defensive stand point.  If another company were to patent the invention, what would it do to your market share?  Are good design-around options available that would allow you to still effectively compete?

4.  Would It Be Better to Publish the Invention Defensively than to Seek a Patent?  It is less expensive (and time consuming) to publish an article that can be used to prevent others from patenting an invention than to seek a patent for it. In addition, the AIA provides a one year grace period to file patent applications if the invention is published by the inventors or those who obtained the subject matter directly or indirectly from the inventors.  Thus, if you ultimately decide that you do want a patent, you may not be foreclosed from doing so if you published the invention defensively less than one year prior to filing a patent application.

5.  How Likely Is it that a Patent Will Be Obtained?  This is another consideration that applies under the first to invent system as well, but those applications with a relatively lesser chance of success should be assigned a lower priority than those with a relatively greater chance of success.

In addition to prioritizing filings, under the first inventor to file system, it is advisable to make more frequent application filings as an invention develops.  Inventions often go through an evolution from making a core discovery to developing critical implementation details to developing improvements.  One issue that companies face now is determining when to file patent applications as an invention evolves.  Under the first to invent system, this was less of a problem because if a competitor filed for a patent on a refinement or development, you could still obtain priority by proving prior inventorship.  Under the first inventor to file system, that is no longer the case.  Therefore, as different milestones are reached in the evolution of an invention, you will want to more closely consider whether each of them merits a new patent application filing.

One strategy that may be worth pursuing is to file multiple provisional applications, starting with one that discloses the basic invention and following it up with others during the one year following the filing of the first application.  Provisional application filing fees are not steep, and you can incrementally add to the first application as new developments occur.  A non-provisional application and foreign applications would then be filed within one year of the earliest filed provisional application so that the
priority can be claimed to each provisional in the chain.

Under the first inventor to file system, filing a provisional application earlier in the invention development process may also be a good idea.  In general, a provisional application is only as good as what it actually discloses.  However, it is difficult to predict how thorough a provisional application’s disclosure will have to be in order to survive a challenge later on, or whether such a challenge will even be made.  In general the thoroughness of a provisional application will not even become an issue unless prior art surfaces which has an effective date after the application was filed.  However, there will be greater risk in waiting to file under the new system.  Thus, under the first inventor to file system, it is better to err on the side of filing a provisional that is insufficiently developed than to wait and have a competitor win the race to the Patent Office.