1st-To-File System Isn't New To Drug Companies


On March 16, 2013, the first-to-file provisions of the America Invents Act take effect. This is one of the biggest changes ever made to U.S. patent law, and completely rewrites what is prior art. Since the AIA was passed, many legal experts have recommended that applicants avoid filing applications under the new law where possible — or file under both the old and new law to keep options open — for fear of being subject to prior art that would not be available under the old law. While avoiding the unknown first-to-file realm has tactical merit, every applicant should carefully consider the pros and cons of filing under each of the regimes before expending time and money to accelerate patent filings to make the March 15 cutoff.

Fish’s Christine Goddard, PhD, wrote this expert analysis article which published in Law360 and addresses the disadvantages and advantages, and the risks and benefits of the new first-to-file provision of the America Invents Act. For more on why first-to-file isn’t new to drug companies, please read this article, “1st-To-File System Isn’t New To Drug Companies.”