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IP in Depth
“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” says Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) David Kappos.
Under compact prosecution, examiners were expected to prosecute a patent application thoroughly in the first USPTO action.
In August 2013, the U.S. Patent and Trademark Office (USPTO) reported a backlog of 591,665 patent applications waiting to be examined and an average total pendency (time from filing to end of examination) of 29.4 months.
Whether the process is performed by an independent inventor or a corporate entity that regularly files U.S. patent applications, having a patent application(s) drafted, filed, and prosecuted involves a substantial investment in invention development time and costs, as well as legal expenses. An additional emotional investment is often based on the hope that pursuing and protecting the invention(s) will result in financial rewards.
When the U.S. Patent and Trademark Office (USPTO) adopted the America Invents Act (AIA) “first-to-file” system on March 16, the following scenarios became reality.
On March 16, the U.S. Patent and Trademark Office (USPTO) will switch from the current “first-to-invent” system to a “first-to-file” system.