Navigating Aspects of the First-Inventor-to-File Provisions of the America Invents Act

Vol. 5 No. 2


Jeffrey Karceski is a patent attorney with Thomas & Karceski, PC, in Washington, D.C. His primary area of practice involves patent prosecution and client counseling, and he has been involved with the enforcement of intellectual property rights before U.S. district courts and the U.S. International Trade Commission (§ 337 investigations). He can be reached at This article is for informational purposes only and is not intended to constitute legal advice. This article is the opinion of the author and is not attributable to Thomas & Karceski, PC, or any of the firm’s clients.

This article is presented to provide guidance to foreign nationals who protect their inventions in the United States as part of a global patent strategy. While many of the guidelines may also assist applicants residing in the United States, this article examines how the first-inventor-to-file (FIF) provisions included in the America Invents Act (AIA), which was signed into law on September 16, 2011, are expected to change, or at least influence, the patent strategies employed by foreign nationals seeking to patent an invention worldwide.

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