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  • R. Scott Kimsey

How to Deal With the U.S. Transition to a First-to-File Patent System

In 2013, the U.S. joined most of the rest of the world in adopting a First-to-File patent system. Before the change, the U.S. system was based on a First-to-Invent rule, and inventors who could establish prior conception of an invention could potentially trump inventors who conceived of the invention later but got to the patent office first. Now that we have a First-to-File system, I'm often asked about the practical implications of this. How does the new system impact inventors who want to protect their intellectual property? How does it change the timing and character of patent filings? A good principle to follow, now, is: file early and often. As soon as you have a sufficiently concrete idea of your invention to support a provisional patent filing, make the filing. You have one-year from that date to file a non-provisional application - the application that the patent office will actually examine. As you develop your invention over that year period, file another provisional every time your invention undergoes a substantial or important modification. You can wrap all of these provisional applications into a single non-provisional filing so long as you do so by the one-year anniversary of the earliest provisional. Filing the provisional applications is like staking out your territory as of a specific date. With the First-to-File system in place, being able to point back to the earliest filing date can be critical to protecting your invention.

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