• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patents
      • Patent Consultation
      • Patent Search Service
      • Patent Application Service
      • Patent Prosecution
      • Utility Patents
      • Design Patents
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademarks
      • Trademark Search
      • Trademark Application Services
      • Trademark Prosecution
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Archives for Patent application process / Before filing a patent application / First to File

First to file

The first to file rule dictates the inventor who first filed a patent application on the invention with the USPTO will be awarded the patent. Browse related articles below.

New Patent Laws (AIA) have been bad for start-ups

October 26, 2013 by James Yang

New Patent Laws (AIA) have been bad for independent inventors and start-ups The America Invents Act (AIA) signed by President Obama in my opinion is not better for independent inventors.  Here’s why. Under the America Invents Act, the U.S. patent system switched from a first-to-invent rule to a first-to-file rule.  Under the first to invent rule, the person who first … [Read more...]

Can a confidentiality agreement protect me like a patent application?

September 3, 2013 by James Yang

Good question.  The bottom line is that a contract (i.e., confidentiality agreement or non-disclosure agreement) and a patent application protect your interests in different ways.  Hence, the recommended course of action is to do both (1) file a patent application, and (2) have the investors and licensees execute a confidentiality agreement to protect yourself. If you don't … [Read more...]

File patent application prior to disclosure due to first to file rule

July 31, 2013 by James Yang

Inventors are not required to file a patent application before marketing their invention (i.e., product or service) to others. However, doing so is not the recommended course of action because the inventor could lose their patent rights due to the first to file rule. A third party may see the invention, make a slight modification to the invention and file a patent application. … [Read more...]

Two exceptions to the first to file system under the AIA are useless

March 22, 2013 by James Yang

Under the America Invents Act ("AIA"), the first-to-file a patent application on an invention is awarded the patent. Under a true first-to-file system like in Europe, the rules require that there be no public disclosure until after the patent application is filed. This is known as absolute novelty. The AIA brings the United States closer to a true first-to-file system but is … [Read more...]

File a non-provisional patent application pre-AIA

January 30, 2013 by James Yang

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 … [Read more...]

America Invents Act

December 22, 2011 by James Yang

The America Invents Act (AIA) which changes major sections of the current Patent Laws became law on September 16, 2011.  Certain provisions become effective immediately while others become effective at a later date.  Click the following link for a schedule of effective dates.  Click the following link for the actual text of the America Invents Act.  More commentary and … [Read more...]

1952 Patent Act definitions are expected to flow through to AIA

November 28, 2011 by James Yang

General rule The America Invents Act (Patent Act) transitions the United States from a first to invent system to a first to file system.  Under the new first to file system, the general rule to obtain a patent on an invention is that absolute novelty is required and the first inventor to file or win the race to the Patent Office will be awarded the patent. Two … [Read more...]

Patent Act: First to file and its exceptions

November 10, 2011 by James Yang

On March 16, 2013, the United States transitioned from a first to invent system to a first to file system under the America Invents Act (“Patent Act”).  Inventors and businesses should consider the following aspects of the law when implementing a patent protection strategy. General rule and the exceptions Under the Patent Act, any disclosure dated prior to the filing date … [Read more...]

« Previous Page
Next Page »

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Patent Consultations
Patent Searches
Patent Applications
Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Overview
Trademark Search Services
Trademark Application Services
Trademark Prosecution Services
Trademark Enforcement Services
Trademark Defense Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney