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The American Invent Act, First to File, and Provisional Applications

Jan 25, 2013

This blog continues the discussion from last week about patents.


The America Invents Act, First to File, and Provisional Applications


Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library,


President George Washington signed the first U. S. patent statute in 1790.  Since that time, United States patent law has uthorized the granting of rights to the first to invent a patentable invention, contingent upon meeting rigorous terms and conditions.  This means that the date the inventor envisioned the invention is the “date of invention” – thus the date of ownership.  Generally, this date preceded the date of filing with the United States Patent and Trademark Office (USPTO).  Soon, this will no longer be the case.


As of March 16, 2013, one of the most debated provisions of the America Invents Act (AIA) will take effect.  As of this date, the “first-to-invent” system will change to the “first-inventor-to-file” system.  This provision changes the legal ownership of a patent onto the entity that is the first to file with the USPTO, thus bringing the U.S. system closer in line with most of the rest of the world.  The new version of § 102 (35 U.S.C. § 102) declares that a person is entitled to a patent unless the claimed invention was publicly disclosed prior to the effective filing date of the patent application. The exception to this being, (1) the disclosure was made less than one year before the filing of the patent application (by the inventor themselves) and (2) the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor. 


Once this provision takes effect, filing patent applications as quickly as possible maybe in the best interest of the inventor.  In order to stay competitive, inventors of all sizes (including small business owners) will need to file patent applications quickly in order to stay ahead of competitors.  Filing a provisional patent application may be one way to quickly get a patent application on file at the USPTO.  A provisional application allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application.  A provisional application also allows the term “Patent Pending” to be applied in connection with the description of the invention.  Provisional applications have a pendency lasting 12 months from the date the provisional application is filed.  The 12 month pendency period cannot be extended.  This means, once a provisional is filed, you will have 12 months to file a non-provisional.  A provisional patent application may or may not be the path for you.  Provisional patent applications do not mature into a granted patent without further submission.  All provisional applications automatically become abandoned when the pendency period expires by operation of law.  Thus, all potential patent applicants are encouraged to gather as much information as possible on this option.  The USPTO website is the foremost information source on provisional patent applications. 


For further updates on AIA, check out the USPTO AIA Blog


A Blog version of this article and an opportunity to post comments is available at


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Tags: patents

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