Patent Filing Dates

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By Rich Stim

Assigned to every application by the U.S. Patent and Trademark Office (USPTO), the filing date is indicated on a “filing receipt” that the USPTO sends to the applicant. The date is usually the date that application is received by electronic filing, or one to four days after the patent application was mailed, or the date it’s mailed if sent by U.S. Postal Service Express Mail.

[Note: The filing date will have an especially important impact when the U.S. switches to a first-to-file system in March 2013, 18 months after enactment of the America Invents Act. (Until that, time, the rules below are still applicable.) After March 2013, issues regarding date of invention and reduction to practice will become, for the most part, irrelevant, unless there is a battle between two competing applications. The same is true for the one-year bar—it effectively disappears. In summary, the filing date will become the crucial date that establishes an inventor’s claim to patent ownership. For more information, check the entry for the America Invents Act.]

Until March 2013, the filing date is crucial for a number of reasons, including the following:

  • The filing date starts the period within which a patent application must be filed in other countries to receive patent protection. If a Convention application in Germany, for instance, is not filed within one year after the U.S. filing date, German patent protection will be precluded. If, however, the applicant files under the Patent Cooperation Treaty within one year of the U.S. filing date, the applicant is allowed a longer time period to file in Germany.
  • The filing date closes the one-year period during which an inventor can publicly use, work, describe, or place the invention on sale in the United States without the anticipation rule being applied to bar a patent on it.
  • The filing date shuts the door on all subsequent developments by other inventors from being considered as prior art. That is, any developments that occur after the filing date will not be considered as prior art that would preclude a patent (which must be novel or nonobvious).
  • The filing date is when the law considers an invention to be first reduced to practice (called constructive reduction to practice), absent evidence that it was actually reduced to practice at an earlier time by building and testing it. In the event of an interference (pending applications by different inventors covering the same invention), the inventor who filed first will receive the patent unless another inventor can show that he or she conceived of the invention first and then diligently set about to reduce it to practice or actually reduced it to practice first by building and testing it.

A Provisional Patent Application (PPA) may be filed up to one year prior to filing a regular patent application. The PPA filing date will count as a constructive reduction to practice and serve as the date for deciding whether the invention has been anticipated by prior art. However, the regular patent application filing date—not the PPA filing date—will count as the beginning of the patent term, which expires 20 years from date of filing, and will also begin the year period in which a patent application must be filed in many foreign jurisdictions—if patent protection is sought in them. The same rules should apply in March 2013, after the U.S. adopts the first-to file system.

To take advantage of the earlier filing date, the regular patent application must specifically claim that date, and the PPA must meet the rigorous standard for disclosure of the invention required of regular patent applications.