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USPTO First to File rules come into effect March 16, 2013


For over 200 years the American patent system has rewarded the first inventor – the first person to make an invention. So if someone thought of an idea, then worked to improve it, and only then filed a patent application, that person would prevail over someone who later had the same idea but filed a patent first.

So the first who first thought of the idea but got to the Patent Office later – say because of broader testing – could still prevail, so long as the inventor worked to improve the invention set forth in the patent application.

That system changes March 16, 2013. For new patent applications filed on and after that date, the inventor who prevails is simply the one who files their patent application first. It is simply a race to the Patent Office.


Changes in the Prior Art Universe




Under the new system, anything available to the public anywhere in the world prior to the time of filing a patent is prior art. This includes any published U.S. or international (PCT) patent applications as of their foreign priority date.


Which Law Applies where a U.S. patent application filed after March 16, 2013 claims priority to a U.S. application filed before this date?




Here, the U.S. Patent and Trademark Office states that a patent application disclosing and claiming only subject matter that was properly enabled and supported in a priority application filed before March 16, 2013 will be governed by the old law.

But if the patent application filed after March 16, 2013 and claiming priority to a pre-March 16, 2013 application contains a post-March 16, 2013 claim, then the entire application is governed by the new law.

So it seems beneficial to obtain the benefits of the old law, by filing for a new patent before March 16, 2013. And claims should be limited to subject matter that is properly enabled and supported in this application.

So from March 16, time is of critical importance.