A Sneak Peek At The USPTO's Proposed First-To-File Rules

For a short time on Friday, July 20, 2012, the USPTO's proposed rules to implement the first-to-file provisions of the America Invents Act ("AIA) were available in the Federal Register's "electronic Reading Room." According to the USPTO's AIA Implementation website, the USPTO temporarily withdrew the proposed rules in order "to enable the Federal Register to publish the first-inventor-to-file rulemaking at the same time as the first-inventor-to-file guidance document" that the USPTO plans to issue. Because this explanation suggests that the USPTO does not intend to change the substance of the proposed rules, I will proceed with my review and analysis of the proposed rules as pre-published.

Changes Addressed by the Proposed Rules

According to the pre-published notice, the proposed rules address the following changes effected by § 3 of the AIA:

convert[ing] the United States patent system from a "first to invent" system to a "first inventor to file" system; treat[ing] U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the U.S. or in another country; eliminate[ing] the requirement that a prior public use or sale be "in this country" to be a prior art activity; and treat[ing] commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. These changes take effect in principle on March 16, 2013, but apply only to certain applications filed on or after that date. (Please see this article for a closer look at the first-to-file effective date provisions.)

Significant Rule Changes

According to the pre-published notice, the proposed rules include the following changes (among others):

adding the definitions provided in the AIA changes to 35 USC § 100. providing for situations in which a U.S. patent or U.S. patent application publication has a prior art effect as of the filing date of a foreign priority application by requiring that the certified copy of the foreign application be filed within certain (early) time periods. imposing additional requirements for nonprovisional applications that straddle the first-to-file effective date, by requiring applicants to identify applications that include claims with an effective filing date on or after March 16, 2013 or that include additional...