AIA Proposed First-to-Invent Rules

On Thursday, July 26, 2012, the USPTO announced publication in the Federal Register of proposed rules and proposed examination guidelines for the first-inventor-to-file provision of the AIA. The first-inventor-to-file provision converts the United States from a “first-to-invent” to a “first-inventor-to-file” system.

How will this affect our clients, the inventors?  Primarily by making it more important to file patent applications as early as possible.  This probably means a greater emphasis on filing provisional applications, in order to get the benefit of a filing date ahead of inventors in the U.S. and other countries.

The proposed rules and proposed examination guidelines amend the rules of practice to implement the conversion and set forth the Office’s interpretation of how the conversion impacts sections of the Manual of Patent Examining Procedure related to novelty and obviousness. The proposed rules and proposed examination guidelines are summarized as follows:

The Leahy-Smith America Invents Act (AIA) amends the patent laws pertaining to the conditions of patentability to convert the United States patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system; treats United States patents and United States patent application publications as prior art as of their earliest effective United States, foreign, or international filing date; eliminates the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The AIA also repeals the provisions pertaining to statutory invention registrations. The current rules of practice in patent cases have a number of provisions based on the conditions of patentability of a ‘‘first to invent’’ patent system.

Stay tuned as the Patent Office finalizes the rules!