Beware the Ides of March on March 15 – or rather, “be aware” of the day after, when new provisions of the America Invents Act go into effect March 16; they include changing “first to invent” to “first to file.”
“The new law now makes the first to win the race to the Patent Office as the winner,” says Monte Falcoff, a patent lawyer and principal at Harness, Dickey & Pierce in Troy, who represents large, medium and small U.S. and foreign companies and universities in a wide range of technical areas. “The unfortunate part is that this will cause more conceptual inventions to be filed in patent applications which will hinder a significant objective of the U.S. patent system: to publicly disseminate enabling technical knowledge. But this does harmonize the U.S. laws closer to those of most foreign countries, for better or worse.”
According to Falcoff, this is the most significant change in U.S. patent law since the revolutionary 1952 Patent Act.
He advises that general practice attorneys who counsel businesses (especially those without in-house patent attorneys) and independent inventors should now inform their clients that it is no longer advantageous for them to wait on filing their patent applications until the invention is fully developed and tested.