U.S. “First to File” Patent System and Strategic Use of Provisional Patent Applications for Small Businesses

By: Jeffrey D. Peterson

On March 16, 2013, the United States will transition to a “first to file” system for filing patent applications. Instead of awarding a patent to the first person to invent an item, the U.S. will award patents to the first person to file a patent application on the invention. The shift to a “first to file” system is intended to simplify and streamline the current system which can invite protracted litigation between competing inventors. The switch would also put the U.S. in harmony with patent offices in Europe, Japan and elsewhere, allowing them to share information and potentially ease the strain on overburdened patent examiners worldwide. Critics of the new change in law, however, say that it will give big companies a huge advantage over start-ups and small inventors. Large corporations have deep pockets and numerous lawyers to write up and file patents they say, and the new law will touch off a race to the patent office instead of a race to innovate. Under the old law, an inventor could establish that he was the first to invent by showing proof of such an invention by way of various types of evidence (lab notebooks, emails and early prototypes) to establish the date of invention. With the new change in the law, such evidence will not be allowed to be introduced and the date of invention will solely be based on the filing date of the patent application. Thus, the importance of preparing and filing a patent application as soon as possible is now more critically important than ever. Companies will now need to investigate the possibility of filing a patent application on any possible patented intellectual property they hold as soon as possible in their business endeavors.

One tool to allow for more efficient filing is the use of a provisional patent application. A provisional patent application is a form of patent application that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year of the filing of a provisional patent.

A provisional patent application includes a specification (i.e. a description and drawings of the invention) but does not require formal patent claims, formal drawings, inventors’ oaths or declarations or other formal paperwork that is normally filed during the prosecution of a utility patent application. The government fees to file a provisional patent application are significantly lower than a utility patent application fee required to file a non-provisional patent application ($250 for a provisional vs. $1260 for a typical utility application). The use of a provisional patent application is a useful tool to establish a priority date of invention, especially when there is insufficient time to generate a complete non-provisional patent application.  The applicant will then have additional time (12 months) in which to file a formal U.S. non-provisional as well as any foreign patent applications on the invention.  All such filings will, however, need to be filed by the end of the twelve month period following the filing date of the provisional application.  The provisional patent application will become a more and more useful tool for small entities to file inventive disclosures of their intellectual property quickly and more cost effectively as the new “first to file” system goes into effect.

If you would like to discuss how the changes in the upcoming change in the patent law effect your business, please feel free to contact Jeffrey D. Peterson at jdpeterson@michaelbest.com.

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