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January 24, 2013



In September 2011, President Obama signed into law the Leahy-Smith America Invents Act.  The America Invents Act is the first major United States patent system overhaul in almost sixty years, and affects nearly all aspects of patent acquisition and enforcement.


On March 16, 2013, under the America Invents Act, the United States transitions from a first-to-invent to a first inventor-to-file system.  After the transition, an application's filing date, as opposed to its invention date, is considered the reference for patentability.  Also following the transition, there is an expanded scope of prior art available for consideration with respect to the patentability of the invention.  These changes put the United States in conformance with the vast majority of other countries that require absolute novelty, and make the timely filing of patent applications critical.


First to File - The Changes

Under the Act, if an Applicant's invention is described in a printed publication, is in public use, is on sale, or is available to the public anywhere in the world prior to the filing date of a patent application, the Applicant will be denied patent rights in that invention.


Additionally, if an Applicant's invention is described in an issued patent or patent application publication which was filed before the filing date of the Applicant's patent application, the Applicant will likewise be precluded from obtaining the patent, regardless of Applicant's invention date.


What To Do?

Up until the transition date, the United States will continue as a first-to-invent system.  Inventors should act now to take advantage of the first-to-invent system while it lasts. 


Mirick O'Connell attorneys can help you review your intellectual property portfolio to evaluate which innovations may be accelerated for filing prior to the March 16th transition date.


After the transition to the first-to-file system, a delay in filing can mean the difference between obtaining a patent and being left out in the cold. Inventors should review their patent filing processes to ensure that their inventions are filed with the U.S. Patent Office in a timely manner. 


Mirick O'Connell attorneys are prepared to work with you to review and optimize your filing processes.  Additionally, we have procedures available that will help expedite the patent filing process and can get you the earliest possible filing date for your invention.




Patent and Intellectual Property Litigation Group


Mirick O'Connell

100 Front Street

Worcester, MA  01608

t 508.791.8500

f 508.791.8502


1800 West Park Drive, Suite 400

Westborough, MA  01581

t 508.898.1501

f 508.898.1502


Mirick O'Connell is a full-service law firm with offices in Worcester, Westborough and Boston, Massachusetts.  The Firm's principal practice groups include Business; Creditors' Rights, Bankruptcy and Reorganization; Elder Law; Family Law and Divorce; Intellectual Property; Labor, Employment and Employee Benefits; Land Use and Environmental Law; Litigation; Personal Injury; Public and Municipal Law; and Trusts and Estates.
This client alert is intended to inform you of developments in the law and to provide information of general interest.  It is not intended to constitute legal advice regarding a client's specific legal issues and should not be relied upon as such.  This client alert may be considered advertising under the rules of the Massachusetts Supreme Judicial Court.