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USPTO Publishes First-Inventor-To-File Rules

by Glen Shapiro,, New York

31 July 2012

The United States Patent and Trademark Office (USPTO) has published a proposal to amend the rules of practice in patent cases to implement the ‘first-inventor-to-file’ provision of the Leahy-Smith America Invents Act (AIA).

The first-inventor-to-file provision converts the United States patent system from a ‘first to invent’ system to a first inventor to file system. The first-inventor-to-file provision, which takes effect March 16, 2013, also alters the scope of available prior art to apply against a claimed invention in determining the novelty and obviousness of the claimed invention.

In addition to amending the rules of patent practice, the USPTO is proposing examination guidelines to inform the public and patent examiners of its interpretation of the first-inventor-to-file provision of the AIA, and how they impact the sections of the Manual of Patent Examining Procedure pertaining to novelty and obviousness.

“The first-inventor-to-file provision of the AIA, one of its hallmarks, brings greater transparency, objectivity, predictability and simplicity in patentability determinations,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “At the same time, the provision brings the US closer in harmonizing our patent law with those in other countries around the globe.”

The first-inventor-to-file proposed rules and guidelines published in the Federal Register are available for public comment until October 5, 2012.

TAGS: business | patents | law | intellectual property | legislation | patent search | United States

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