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PTO's Proposed Rules to Implement First Inventor to File Provisions of AIA

February 4, 2013 – As a follow-up to our earlier newsletters regarding the changes in the patent laws under the America Invents Act ("AIA"), we remind you of the upcoming deadline of March 15, 2013, in which to file an application not subject to the new first-to-file system of the AIA.

As discussed in our newsletters and generally acknowledged by the patent bar, applications filed under the first-to-file system will have certain disadvantages over earlier filed applications. Among the disadvantages are an expansion of the unpublished disclosures which will be available as prior art and eligibility of such an application for post-grant review (opposition-like) attack. We refer you to our earlier newsletters for more details.

If you are contemplating filing in the US, please consider whether you may want to secure a US-effective filing date on or before March 15, 2013, either through a non-US filing to which priority in the US application will be claimed, a PCT application designating the US or a direct filing in the US of a provisional or non-provisional application. Also, even if your non-US priority case is already filed, you may want to consider making your PCT or US filing to secure a US filing date by March 15. We are not of the opinion that the advantages are so significant that filing of applications that are not yet complete is warranted. However, if the application is substantively complete, you may want to consider filing by March 15.

Also, some commentators have suggested that you may want to address any 35 U.S.C. §112 issues in pending applications by the March 15 date, because this allegedly could cause a claim (and thus the whole application) to fall under the new law/rules. This situation is unclear and we will update you if it is clarified. But, particularly since the PTO is unpredictable, you may want to consider accelerating filing of replies to outstanding Office actions with 35 U.S.C. §112 rejections to on or before March 15.

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