Intellectual Property: And the winner is - the first to file or publish

by James A. Mitchell
Mitchell IP Law

KEY POINTS
• On March 16, the United States went from a first to file patent  system to a first to file or publish system. 

• As an exception, you have one year from your own publication to file your US application.   This can prevent intervening prior art from being cited against you.

• The one year exception does not apply if you want to file foreign patent applications.

• Do not be trapped into thinking a provisional application is a “quick and easy” way to preserve an early filing date.  A provisional application will preserve an early filing date for you, but only if it is thoroughly and competently prepared. 

First to file or publish:  Our new patent law, which went into effect on March 16, has been referred to as a “first to file” patent system, in contrast to our prior “first to invent” system.  It may be more helpful to refer to our new law as a “FIRST TO FILE OR PUBLISH” system.  This helps one remember that, with one exception, not only must you file your patent application before the other guy does, but also you must file before the other guy publishes. 

Under our prior law, you had to be the “the first to invent.”  That meant not only could you prevail in an interference with another inventor who may have filed an application prior to you, but also you could overcome a prior art reference by proving that you had invented your claimed invention prior to the date of the reference.  That is no longer true.  Now, with one exception, a prior publication, or a prior filed United States patent application when published, is prior art.

The one exception is that you do have one year from your own publication, public use or offer for sale within which to file your United States patent application.  If you have made your invention public in this way, and you do file within one year, you avoid any intervening third party prior art, including any intervening third party United States patent application.

The one year exception does not apply, if you want to file your patent application in foreign countries.  If you want to reserve the right to file in countries foreign to the United States, you must make certain that your United States or International patent application is filed before the invention is made public in any way.  Then, (1) your international or other foreign applications must be filed within 12 months of your first application filing date (only six months in the case of design patents); and (2) there are some foreign countries, most importantly Taiwan, where your foreign patent application should be filed at the same time your United States or international application is filed  -BEFORE THE INVENTION IS MADE PUBLIC IN ANY WAY.

The use of provisional patent applications will increase, but not for reasons many people think.  Obviously, the new patent law creates incentive to file a patent application on your invention as soon as possible.  Many people think that filing a provisional patent application is a quick and inexpensive way of preserving an early filing date.  That view is a trap, and is not a good reason to file a provisional patent application.  However, the fact that a well written provisional patent application does give you a filing date and up to one year of application pendency without triggering your twenty year patent term is a valid reason to start with a provisional patent application in some circumstances.

A provisional patent application serves no purpose but to give you a filing date.  It is never examined, and it never becomes a patent.  However, if you file a non-provisional patent application within one year of your provisional filing date, your non-provisional patent application will be given the priority filing date of your provisional patent application, but only to the extent your provisional application includes a disclosure which enables a person of ordinary skill in the art to practice the invention you claim in your non-provisional application.  A provisional patent application which does not include an enabling disclosure for your later filed non-provisional application is at best a useless waste of money, and at worst a trap which lulls you into a false sense of security, and causes you to lose your patent rights to intervening prior art.  

A provisional application must be carefully and thoughtfully prepared.  While it is not necessary to include the “claims” which define the scope of your invention and which are required for your later filed non-provisional application, you are poorly advised if patent counsel has not thought through what those claims should look like in preparing your provisional application.  Thus while the cost of preparing a well written provisional application may be a little less than the cost of preparing a non-provisional application, it will not be substantially less. 

Nevertheless, an important reason to file a non-provisional application is that it gives you a filing date without starting the clock on your twenty year patent term.   The term of your patent, subject to some possible extension for prosecution delay caused by the patent office, is twenty years from your priority filing date, not from your patent issue date.  The one exception to that is the filing date of your provisional application.  Even though your non-provisional application filed within one year of your provisional is entitled to the earlier filing date of the provisional, it is the actual filing date of the non-provisional which starts the twenty year clock.  Thus, you get an additional year of pendency which you would not have enjoyed had you filed a non-provisional application.

Whether to file a provisional or non-provisional thus turns on whether the additional year of pendency would be helpful or harmful to your commercial interests. 

If your invention is ready to go to market, and if your industry is one in which new products are quickly imitated, you would probably be best served by filing a non-provisional application from the outset.  However, if it will be months or even years before you get to market, or if you are an individual looking for an investor or a company to license your invention to, you are best served by filing a well written provisional application first, and then a non-provisional application within a year.