Walking the Line: How to Balance First-to-File with Making Sure You Have Sufficient Written Description and Enablement

Timing can be everything…especially when you’re working within a first-to-file patent system. Europe and other major countries have always known this to be the case, and the U.S. patent system may finally be coming around. Changing the U.S. patent system from the existing first-to-invent system (which awards priority to the true inventor) to a first-to-file system (which awards priority to one who wins the race to the Patent Office) will bring sweeping changes to the filing and prosecution strategies that have long been practiced in the United States.

This program will highlight:

- Major aspects of the currently proposed legislation and explain how their implementation will impact U.S. filing and prosecution strategies moving forward.

- The possible elimination of the Hilmer Doctrine, including the need for foreign applicants to file provisional applications.

- Though moving to first-to-file will change the definition of prior art United States, the Grace Period will remain. See how that will affect the prior art landscape in a first-to-file system.

- An emphasis will be placed on early filing, but that still needs to be balanced against the sufficiency of the specification to describe and enable the claimed invention. Filing too early could be catastrophic for some inventions.

Moderator:

Mark D. Sweet

Speakers:

Michele C. Bosch

Bryan C. Diner

Time:

16:00 CEST

10:00 EDT

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