Manatt Partner Comments on Changes to U.S. Patent Filing System
"Race Is On To Apply For Patents Before 1st-To-File"
Law360
January 17, 2013 - Manatt's Robert Becker, a partner in the firm's Intellectual Property Practice, spoke to Law360 about how the United States patent filing system will change when a new system, mandated by the America Invents Act, takes effect on March 16.
Law360 reports that the mandate requires the United States to switch from a first-to-invent to a first-to-file patent system, meaning inventors will no longer be able to rely on the date they came up with the invention to defeat prior art. The mandate also expands the definition of prior art to include published patent applications from anywhere in the world, or used or sold outside the United States. Currently, the system only considers prior art to include patent applications published in the country, or applications in another country that designate the United States and are published in English.
"There's a lot of prior art that you would have been able to get around that you can't [beginning March 16]," said Becker. "That's a major drawback."
There may be some situations in which the applicant would benefit from waiting until after March 16 to file. In a limited number of scenarios, the new system might let applicants eliminate prior art that they couldn't under the current rules, according to Becker.
But "anybody who thinks they may have a situation like that needs to have a conversation with a patent attorney, because the issues are very complicated and haven't been vetted by the courts," Becker said.
Read the article here.