File a non-provisional patent application pre-AIA

On March 16, 2013, the United States will transition from a first to invent system to a first to file system under the America Invents Act (“AIA”).

In my opinion, it is more advantageous to have a patent application governed by the first to invent system than the first to file system even though the first to invent system for the most part behaves like a first to file system.

What I mean is this?

Although the first to invent system allows inventors to argue that they are the first to invent through an interference proceeding, and thus should be awarded the patent, only a few hundred applicants out of the hundreds of thousands of patent applications filed on a yearly basis take advantage of the first to invent rules and the interference proceeding.  Hence, we essentially have a de facto first to file system but a de jure first to invent system.

Why do I, in my humble opinion, think that the first to invent system is more beneficial to applicants than the first to file?

  1.  The first to file system is a very harsh rule.  If you are late by one day, then you are not the first to file and will not be awarded the patent.  The filing dates of the conflicting applications are compared.  The earlier one wins.  You have one exception.  That is the derivation proceeding.  However, this proceeding is expected to have limited applicability because of the stringent requirements set forth by the Patent Office to even have your petition for a derivation proceeding granted.
  2. Under the first to file system, you cannot swear behind a reference.  In contrast, under the first to invent system, if a patent examiner cited to a reference which predates your invention less than one year from the filing date of your patent application, you can submit a declaration that you conceived of the invention prior to the effective prior art date of the cited reference.  You were the first to invent.  You essentially eliminate a reference used by the examiner as a reference.  This usually leads to allowable subject matter.  Under the first to file system, you no longer have this opportunity.

For these and other reasons, if you want to file a patent application on your invention, then it is my opinion that you file your patent application prior to March 16, 2013 when the first to file rules of the AIA takes effect.  Also, if you have a provisional patent application on file with the patent office, it may be prudent to file the corresponding non provisional patent application prior to the March 16, 2013 date to ensure that the non-provisional patent application will be governed under the first to invent system, instead of the first to file system.  The AIA permits post AIA filings to be governed under the first to invent system but due to certain ambiguities in the AIA language, it may be prudent to file the non-provisional patent application pre-AIA.

I invite you to contact me with your patent questions at (949) 433-0900 or Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

About the Author

James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

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James Yang is an Orange County patent lawyer and welcomes potential clients throughout California including Orange County, Riverside County, Los Angeles, San Diego, Santa Ana, Irvine, Orange, Anaheim, Newport Beach, Huntington Beach, Tustin, Brea, Fullerton, Buena Park, Mission Viejo, Lake Forest, Laguna Niguel, Stanton, San Clemente, Laguna Hills, Laguna Niguel, Cypress, Laguna Beach, Coto de Caza, Costa Mesa, Aliso Viejo, Ladera Ranch, Dana Point and Foothill Ranch.