Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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Entries in First to File (3)


America Invents Act signed into Law on September 16, 2011

President Obama Signing America Invents ActPresident Obama signed the America Invents Act into law on September 16, 2011.  The law is a significant change in the substantive rights of inventors and patent owners.  The effective date of many provisions is immediate.

The following are significant provisions:

  • Transition to First-Inventor-to-File System
  • Improving Patent Quality by establishing the opportunity for third parties to submit information related to a pending application for consideration by a patent examiner. The Patent Reform Act also creates a “first window” post-grant opposition proceeding, open for nine months after the grant of the patent, to allow challengers to weed out patents that should not have been issued.
  • Improves Administrative Challenges of Patent Validity by creating adversarial inter partes review conducted by Administrative Patent Judges.
  • Provides More Certainty In Damages Calculations
  • Creates a Supplemental Examination Process to incentivize patent owners to commercialize their inventions despite flaws in the application process.
  • Provides PTO Fee Setting Authority. The bill mandates a reduction of fees by 50 percent for small entities and 75 percent for micro-entities.
  • Bans Tax Patents

If you have an invention, patent application, or patent, an audit of your portfolio may be necessary to assess a change in your rights. 

Subscribe to my newsletter for free white papers on the substantive changes.



US House Takes Up First-to-File System

The US House of Representatives has taken up the America Invents Act.  The legislation moves the US to a first-to-file system and, in a legislative compromise, excess fees raised by the USPTO will be kept in a reserve fund.

A final vote is expected later this week.

The US Senate has already approved the legislation.


First-to-File Patent System One Step Closer

The United States has taken one more step to moving to a first-to-file patent system.  U.S. Commerce Secretary Gary Locke today issued a letter to the House Judiciary Committee supporting the America Invents Act.  In short, the act 1) moves the USPTO to a first-to-file jurisdiction and 2) will also allow the USPTO, which is entirely fee funded, to set and retain the fees it collects from its users.

Currently, the US is a first-to-INVENT system and is a revenue source for the rest of the government (not just the USPTO itself).  Read more about the different systems.

In its letter, the USPTO states it is supporting the legislation to be more fair to small inventors who are not able to bear the cost of reducing to practice.  However, I have had considerable success helping small and large inventors "swear back" behind (i.e. ante-dating) patents using first-to-invent declarations under 37 CFR 1.131.  See for example, US Patent No. 7,879,374.

My opinion is that the USPTO's support is all about keeping its fees.  The first-to-file is merely a concession.  If you have a different idea, please comment.

So, how should inventors proceed?

Under a first-to-file system, provisional patent applications for a quick filing date are more critical than ever!  In fact, an immediate provisional patent application should be considered as part of any larger patent prosecution (application) project.

Request a patent consultation to establish a filing date to protect your invention--it's going to be a race to the USPTO.