First-To-File Cautions And Strategies

When the U.S. Patent and Trademark Office (USPTO) adopted the America Invents Act (AIA) "first-to-file" system on March 16, the following scenarios became reality.

Scenario 1: U.S. Inventor A invents a widget and, relying on the one-year U.S. grace period, publishes the invention and applies for a U.S. patent within one year from publication. Within a year from the U.S. application filing date, Inventor A files an international patent application and claims priority to her U.S. patent application filing date. Result: Inventor A may obtain a granted U.S. patent, but her publication prior to filing her U.S. patent application (reliance upon the U.S. one-year grace period) will bar her from obtaining a patent in most foreign countries.