Changes to Patent Law on March 16th – Updates Courtesy of Gregory Mayback, Esq.

This information has been provided by Gregory Mayback, Esq. of  Mayback & Hoffman, P.A. located in Ft. Lauderdale, Florida. Greg can be reached at and you can learn more about his law firm at

We are writing to keep you apprised of significant changes to U.S. patent laws.  The final changes will come into effect on March 16, 2013.  Please understand that these new laws are enacted by the legislature and, thus, the laws and rules following will be subject to judicial interpretation.


First-Inventor-to-File: This is the most significant change because the U.S. is converting from a first-to-invent (FTI) system to a first-inventor-to-file (FITF) system on March 16th.  This change is a significant step towards international harmonization and an incentive to file patent applications quickly.  The old laws protected the first inventor by giving the inventor credit for the time between reduction of the invention to practice and the application filing.  The new system, however, protects the inventor who files first.  Therefore, if a current invention has been developed over the past months or even year or two, an application should be filed before March 16th.

(It is noted that an inventor will not be able to obtain a patent on an invention publically disclosed by another prior to the inventor’s filing date.)

Grace Period: There is now an incentive to publically disclose inventions.  Beginning on March 16th, inventors will have a one-year grace period from a private disclosure of the invention in which to file an application.  However, if a second inventor publically discloses the same invention before the first inventor’s filing date, the second inventor can cut off the first inventor’s grace period.  In such a case, the first inventor would be unable to obtain a patent.  Furthermore, the second inventor who first disclosed the invention publically could be eligible to obtain a patent on the invention.  (This may lead to the defensive publication of inventions in order to prevent others from obtaining patents.)  It is noted that only a few countries provide for a similar grace period.  So, public disclosure before filing an application may bar an inventor from obtaining foreign patents.

Prior Art: On March 16th, the definition of prior art expands to include sale or public use in foreign countries.  Also, U.S. patents or printed applications are now prior art as of the date they were first filed anywhere.

Assignee Filing: Assignees can now file a patent application instead of the inventors.  Under appropriate circumstances, where an inventor is unavailable, assignees may file a statement in place of the oath or declaration by the missing inventor.  The inventor is no longer required to state that s/he reviewed and understands the application or acknowledges the duty of disclosure.

Inventor’s Oath or Declaration: The Inventor’s Oath or Declaration can now be delayed until payment of the issue fee, the last step before issuance.  However, prosecution can be delayed if inventorship is pertinent to the prosecution.  Additionally, an oath or declaration no longer requires the identification of an inventor’s citizenship or that the inventor believes himself to be the first inventor.

Micro-Entities: The new micro-entity status makes inventors or entities eligible for a 75% discount on some USPTO fees beginning March 19, 2013.  If one or more applicants or inventors is named on the application or patent, all must qualify as micro-entities to be eligible for the discount.  There are two ways to qualify for micro-entity status:

The first way to qualify is to meet the following four criteria:

(1)  must qualify as a small entity;

(2)  must not be named as an inventor on more than four previously filed applications, not including

a. applications filed in another country;

b. provisional applications under §111(b);

c. international applications for which the basic national fee under §41(a) was not paid;

d. patent applications where the inventor assigned or is under an obligation by contract or law to assign, all ownership rights in the application as a result of the inventor’s previous employment;

(3) must have a gross income of less than three times the median household income for the latest year reported by the Census Bureau (currently $150,162);


(4) must not have assigned, granted, or conveyed or under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application to an entity that would not meet the income limitation.

second way to qualify is to meet the following two criteria:

(1) must qualify as a small entity; and


(2)(i) be employed by an institution of higher education and the applicant obtains most of his income from that institute of higher education


(2)(ii) have assigned, granted, conveyed, or be under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the application to an institution of higher education.


Preissuance Submission: Third parties can now submit relevant patents, published patent applications, and printed publications during certain periods during the prosecution of another persons’ application.


Citations of Prior Art: A third party may submit a patentee’s written statements made in court or to the USPTO in order to limit the scope of the claims.

Supplemental Examination: A patentee may ask for the Examiner to consider, reconsider, or correct information in a patent.  This is based on any condition for patentability and the material considered is not limited to patents and printed publications.  This petition can also be used to immunize the patent against inequitable conduct.  If the Examiner finds during this Supplemental Examination that there is a substantial new question of patentability, this triggers Ex Parte Reexamination.


Advice of Counsel: Failure to obtain advice of counsel may no longer be used to prove willful infringement or intent to induce infringement.

Defense to Infringement Based on Prior Commercial Use: A defense to infringement is prior commercial use.  Therefore, trade secrets will no longer be barred by a later patent.  In contrast to the other laws that encourage disclosure, this defense discourages disclosure.  For this reason, inventors and entities should defensively save lab notebooks and other evidence to show prior commercial use.  Although this is a potentially powerful defense, this defense will not invalidate the asserted claims.

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