It’s a First-To-File System: How Does That Impact My Practice?

Originally published November 17, 2011

Perhaps none of the provisions of the recently enacted Leahy-Smith America Invents Act (AIA) will have a more significant impact on the day-to-day patent practice in the United States than the switch from the current "first-to-invent" system to a "first-to-file" system. Indeed, the AIA substantially redefines the scope of prior art and establishes a "First-Inventor-to-File" (FITF) system. Though more akin to foreign "first-to-file" systems, the FITF system includes substantial differences that are highlighted throughout the remainder of this article to institute new best practices that address this legislation.

The race to the U.S. Patent and Trademark Office (PTO) begins in earnest on March 16, 2013. As of that date, current sections 102 and 103 of the patent statute will be replaced with provisions of the AIA that focus on an application's effective filing date in the determination of whether art that existed prior to that