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November 8, 2012
Barbara M. Fornasiero
barbara@eafocus.com
248.651.7536

March 2013 Change from "First to Invent" to "First to File" Patent System Requires Strategic Action Now for R&D-Driven Companies

ANN ARBOR – The change from the 220-year-old “first-to-invent” system to a first-to-file system, one of the last provisions of the Patent Reform Act (America Invents Act) of 2011 to be implemented, goes into effect March 16, 2013 and puts the United States Patent and Trademark Office (USPTO) in conformity with patent systems around the globe. While patent practitioners have been studying the changes that will occur as a result of this patent reform provision for some time, attorney Mike Gzybowski of Brinks Hofer Gilson & Lione, one of the nation’s largest intellectual property law firms, says the time is now – not after March 16th, for companies to become familiar with how the changes will impact the lifeblood of their businesses: R&D, intellectual property rights and strategies.

“The first-to-file system will only apply to applications that have an effective filing date of March 16, 2013 or later. R&D intensive companies large and small should consider preparing and filing patent applications before March 16th on any new technologies or inventions currently in development before the first-to-file provision takes effect,” urges Gzybowski, who favors the move to a first-to-file but does see business advantages under the current system.

Gzybowski notes the soon to be gone “first-to-invent” system allows the USPTO to go to great lengths via costly interference procedures borne by the dueling claimants to ensure the actual first inventors receive the right to be granted patents for their inventions when disputes arise.

“That’s why the first-to-invent system is said to favor large companies over small inventors. From 2004 to 2011, more than 3 million patent applications were filed and of those, only one individual inventor was successful in winning an interference procedure. Small inventors rarely have the money to exchange in a patent battle,” explains Gzybowski.

With the current first-to-invent system, the first inventor of an invention can be reasonably confident as to his/her priority in time over a later inventor as long as uninterrupted due diligence can be established from the date of conception of the invention until either a patent application is filed or the invention is reduced to practice.

“Under the first-to-invent system, the first applicant to file for an invention wins over the second inventor to file unless it can be shown that the first applicant derived the invention from the second applicant. One day can literally make a difference in obtaining or losing rights to an invention,” explains Gzybowski. “That’s why this significant move to a first-to-file system merits review now for companies who stand to benefit more in certain circumstances under first-to-invent.”

In addition to preparing and filing patent applications on new technologies and inventions currently in development, Gzybowski says companies should consider revamping their invention review and patent decision-making procedures to accelerate the preparation and filing of patents or provisional patent applications on inventions that merit protection.

“It is not uncommon for companies or company personnel to take excessive time to prove and sometimes over-test new technologies and then procrastinate when it comes to the process of drafting invention disclosures and working with patent counsel to draft and file patent applications. The urgency dictated by the March 16th deadline requires a dramatic change from this approach over the next few months to maximize patent protection opportunities,” concludes Gzybowski.

Brinks Hofer Gilson & Lione
Brinks has more than 140 attorneys, scientific advisors and patent agents who specialize in intellectual property, making it one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them identify, protect, manage and enforce their intellectual property. Brinks lawyers provide expertise in all aspects of patent, trademark, unfair competition, trade secret and copyright law. The Brinks team includes lawyers with bachelors and advanced degrees in all fields of technology and science. Brinks has offices in Ann Arbor, Chicago, Washington, D.C., Research Triangle Park, Salt Lake City and Indianapolis. More information is available at www.usebrinks.com.