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Patent Lawyers Split on Impact of Switch to First-to-File System
After nearly a year and a half, the switch to a first-to-file patent application system is almost here and lawyers' opinions on the impact it will have on filing activity are divided along industry lines.
The Leahy-Smith America Invents Act, which was signed into law in September 2011, provided that the U.S. abandon its first-to-invent system for determining who is awarded a patent on a particular discovery or invention to a first-to-file system.
Currently the U.S. is the only country using a first-to-invent protocol, meaning that if a person can prove they were the first with a new product or idea, they will be awarded protection even if they were not the first party to file.
Though companies have had nearly 18 months to prepare for the changes, which go into effect March 16, patent lawyers whose practices focus on software and information technology companies say there is pressure to file any patent that is reasonably ready in order to be grandfathered in under the existing rules and avoid a faster filer jumping in front of them.
"There has been a focus in the past few months to convert provisional applications and file final ones prior to the change," said Fish & Richardson partner Mark Kirkland, who specializes in software and electronics patents. "Clients are pushing to get this done, there is definitely an urgency."
Attorneys for life science clients, however, maintain that it will be business as usual. Patents in the medical field are generally more concrete than software patents, which have a tendency to be written as broadly as possible. Vern Norviel, who leads the patent counseling team at Wilson Sonsini Goodrich & Rosati, said there is little backlog for life science companies, which have historically operated under first-to-file parameters. "If the science is done, then you've filed, simple as that. Most of the buzz is from tech lawyers who are now in a panic. Biotech and pharmaceutical companies have always been in a rush to get things filed as quickly as possible." Norviel's practice focuses exclusively on companies in the medical fields.
Patrick Ross, a spokesman for the U.S. Patent and Trademark Office, says that the agency is not expecting a significant influx of filing activity, regardless of the industry. The costs of filing patents will increase on March 19 and any increase will likely stem from that, he said. "Companies have known about this for the past 18 months and the assumption is that they biggest driver will be financial," Ross said.
Ross added that the agency cannot disclose filing statistics for the year-to-date period in 2013 and comparison with this period last year is not available.
According to the USPTO's Performance and Accountability Report for the fiscal year ending Sept. 30, there were 565,566 patent applications filed, up from 537,171 the previous fiscal year.
Anecdotally at least there is not much of an increase so far this year from the year-earlier period, according to Gabrielle Higgins, an intellectual property litigation partner at Ropes & Gray in Palo Alto. Though she cautioned that it is far from scientific, based on the sequential numbers assigned to patent applications filed on behalf of her firm's clients, activity has remained stable.
Regardless of what is happening now, Fish & Richardson's Kirkland said the rules are creating a more streamlined path to filing patents. "There's an efficiency there that hasn't been there in the past. There is more pressure to get things done and companies are going from idea to analysis much more quickly."