First-to-File and Continuation Applications

By: Dan Pierron

As has been well publicized, starting March 16, the U.S. patent system will join the rest of the world by transitioning from a First-to-Invent system to a First-to-File system, where regardless of when they invented it, the first applicant to file an application with the USPTO has priority.  Many are predicting a torrent of applications to inundate the Patent Office in the weeks and days beforehand.  Indeed, my own office has seen a noticeable uptick an applications being filed, both now and on or before March 15.  Once March 16 arrives, no applications with an effective filing date thereon or after will be examined under First-to-Invent rules.  However, applications filed on or after March 16 with an effective filing date before then will be examined under First-to-Invent rules.  As such, divisional and continuation applications would be so examined, but continuation-in-part applications would almost inevitably be examined under First-to-File.

For those unfamiliar with the term, an effective filing date is the date the Patent Office uses in determining what prior art applies to a patent application.  If an application is filed January 1, 2013, all prior art (such as patent applications, scientific papers, etc.) published on or before December 31, 2012 could be used by an examiner when determining the patentability of the claims of the application.  However, if an application claims the benefit of a prior application, then the effective filing date gets moved by to the filing date of the earlier application.  Claiming the benefit can occur in a number of scenarios, such as in a utility patent application claiming the benefit of a provisional application, or a continuation application claiming the benefit of a previously-filed utility patent application, or a divisional application resulting from a restriction requirement by an examiner in an earlier application.  However, a continuation-in-part (CIP) application gives rise to the unique situation where part of what is described in the earlier application, specifically that which was described in the earlier application, has an effective filing date of the effective filing date of the earlier application, and any disclosure not in the earlier application has an effective filing date of the filing date of the CIP application.

So what does this mean in terms of applications filed on or after March 16?  For divisional and continuation applications, as well as utility applications claiming the benefit of a provisional application, if the earlier filed application was filed before that date, because all the disclosure that may support a claim was filed prior to March 16, the application may be examined under First-to-Invent rules.  However, in the case of a CIP, if any claims relies upon disclosure made after March 15, the entire application is examined under First-to-Invent rules.  What’s more, it appears that even if any such claim is cancelled, the application will continue to be examined under First-to-Invent.  Therefore, if the rules under which an application is to be examined are an important consideration, claims in that application must be carefully tailored to not give a hint of relying on post-March 15 disclosure.

 

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