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 Provisional Patent Applications (1)

Wednesday
Jun012011

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.