The first-to-file provision will apply to patent applications with an effective filing date of March 16, 2013, or later.
“The most widely discussed feature of the American Invents Act (AIA) is the impending replacement of the longstanding “first-to-invent” system with what is commonly–and somewhat inaccurately–called a “first-to-file” system. The first-to-file provision will apply to patent applications with an effective filing date of March 16, 2013, or later. In the fast-moving world of technology companies, that might seem like a lifetime in the future.
But there are at least three very good reasons to start planning for this change now.
First, the new first-to-file system will fundamentally alter the role of public “disclosures” in preserving the patentability of an invention. Disclosures can include presentations and demonstrations at trade shows, official postings on company websites, and even unauthorized postings by company employees on social networking sites. For all but the smallest companies, it will take significant time to ensure that everyone who communicates with the outside world about company technology–including executives, managers, marketers, developers, and salespeople–is fully aware of the new landscape regarding disclosures.
Second, a company can use the time between now and March 16, 2013, to file patent applications that will be pending during the transition from first-to-invent to first-to-file. As I’ll discuss in a later post, that presents the opportunity to create some very interesting and potentially valuable options with respect to downstream patent applications.
Third, the first-to-file system will create some new exposures with respect to intellectual property (IP) security. In a future post, I’ll discuss the nature of these exposures and some steps that companies can take to help reduce the risk of becoming victims of IP theft…”