Category: First-inventor-to-file

The First Year of First-Inventor-to-File: Applicants, Patentees, Assignees, and Petitioners Adjusting to the New Regime

Editor: Adriana L. Burgy

Anniversaries invite reflection. On the one-year anniversary of the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA), we look back at the past year.

On March 16, 2013, many patent applications were filed just prior to the implementation of FITF. But many parties filed applications under the new rules, perhaps taking advantage of opportunities that they may afford.

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USPTO Releases Examiner Training Materials on Prior Art under the First-Inventor-to-File System

One of the biggest AIA changes to affect patent examiners (and applicants) is the transition from a first-to-invent to a first-inventor-to-file system. To assist with this transition, the USPTO has been rolling out a series of examiner training materials along with a training timeline that outlines training programs that extend into FY 2014. The latest training materials provide in-depth explanations and examples for an examiner to analyze the novelty of a claimed invention.

Of particular note, the training materials include a “FITF Comprehensive Training Definition Sheet” that defines key AIA terms. Among those terms is the “effective filing date.” The first step in the novelty analysis is determining the effective filing date of the claimed invention, which is determined on a claim-by-claim basis. The materials define effective filing date for AIA applications (other than reissue applications) as the earlier of the actual filing date of the application or (2) the filing date of the earliest application for which the application is entitled to a right of foreign priority or the domestic benefit of the earlier filing.

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Constitutional Challenge to First-Inventor-to-File System Dismissed for Lack of Standing

Author: Anthony J. Lombardi
Editor: Michele C. Bosch

On May 8, 2013, a federal judge in Florida dismissed a constitutional challenge to the AIA’s first‑inventor-to-file system, concluding that the plaintiff lacked standing to bring suit. In dismissing the case, the judge ruled that plaintiff MadStad Engineering and its owner had not established a “certainly impending” injury.

MadStad argued it had standing based on four asserted injuries. First, due to the first-inventor-to-file system, it expended additional money to maintain heightened computer-security measures to protect its data concerning potential inventions from being hacked by intellectual-property thieves. Second, the first‑inventor-to-file system caused it to acquire and maintain additional equipment for in-house product development and testing so that it could avoid sending unpatented intellectual property to outside vendors. Third, the first-inventor-to-file system caused it to spend more time and incur higher costs to file additional patent applications to protect its ideas. And, fourth, it lost business and investment opportunities because the first‑inventor‑to‑file system deters inventors from sharing ideas with potential partners and investors.

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