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IP: Determining the best time to file a patent application

The new first-to-file system complicates the filing timeline

Filing a patent application is a key step in protecting the intellectual property of a company. As patent reform under the Leahy-Smith America Invents Act becomes effective, the timing of patent application filing becomes even more important because the U.S. is changing from a first-to-invent system to a first-to-file system. Under a first-to-file system, a dispute over who gets a patent when more than one party files a patent application directed to the same invention is generally resolved by comparing filing dates. Thus, having an early filing date is paramount.

Nonetheless, the decision about when to file a patent application is not simply a matter of how quickly the invention can be written on paper and sent to the Patent Office. The patent application must still contain sufficient information to satisfy the requirements for patentability and, in the case of continuing applications, for claiming an earlier effective filing date.

Enablement is not solely an issue for chemical and biotech inventions as shown, for example, in Liebel-Flarsheim v. Medrad (claim scope that covered both jacketed and jacket-free needle holders was not enabled by description of only jacketed needle holders); Automotive Technologies International v. BMW (claims scope that covered both mechanical and electronic side impact crash sensors were not enabled by description of only mechanical crash sensor); and Sitrick v. Dreamworks LLC (claim scope that covered both movies and video games was not enabled by description of only video games).

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Janelle Waack

Janelle Waack is a partner at Novak Druce + Quigg LLP and focuses on interference matters before the United States Patent and Trademark Office Board...

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