Patents provide inventors with valuable protection over their inventions. Each year, hundreds of thousands of inventors seek patents, with 374,006 patents being granted by the U.S. Patent and Trademark Office (USPTO) in fiscal year 2021 alone.
However, when the U.S. shifted from a first-to-invent to a first-to-file patent system several years ago, it fundamentally changed the way that patent rights are determined in the country.
What is First-to-File?
In the past, the USPTO awarded patents to whichever applicant was able to prove, by meeting various evidentiary burdens, that they created the invention first. However, with the enactment of the America Invents Act, effective on March 16, 2013, the U.S. shifted to a new model in which patents are awarded to the applicant who filed their patent application first. The AIA fundamentally changed the way that inventors interact with the American patent system to secure their rights.
Prior to the change, the U.S. was one of just a few developed countries that followed a first-to-invent system when determining patent rights. The first-to-invent model saw the inventor who first conceived the invention and reduced it to practice as holding the superior claim.
In cases where two individuals both claimed to be the original inventor of a certain invention, the USPTO held proceedings, called “interference” proceedings, in which each party was invited to present evidence of their invention’s conception and reduction to practice and the evidence was evaluated to determine who held the superior right.
Interference proceedings were viewed by many as esoteric, costly, and time-consuming. In many cases, despite evidentiary showings, it was nevertheless difficult to determine the actual true inventor.
Moreover, the differences between the U.S. first-to-invent filing system and the first-to-invent systems of most other countries led to amplified legal complexities for foreign applicants accustomed to their home regimes, and for those pursuing patents internationally.
Ramifications of the First-to-File Rule
The revised sections of Title 35 of the United States Code, (the federal statutory law governing patents) now identify the critical date for determination of what constitutes “prior art” as the date on which the application was effectively filed with the USPTO when determining who is entitled to a patent.
The effective filing date may include priority dates, which are earlier dates than the actual filing date to which the applicant is entitled to claim back to. These earlier dates may include earlier dates of filing of foreign applications or international applications to which the application is drawn from.
Moving to first-to-file “harmonizes” or places the U.S. in line with the practices in other countries regarding the fundamental manner in which the patent system is structured. First-to-file creates a clear incentive to file a patent application as soon as possible with the USPTO. By filing sooner, an applicant can ensure that they will have a superior right and be more likely to be able to engage in enforcement activities.
In many cases, a provisional patent application may be used to establish an earlier filing date. A provisional application is an application that, while not 100% fully developed, may be sufficient to disclose the important aspects of an invention. The applicant then has 1 year to file a non-provisional application.
One advantage of a provisional patent application is that it can generally be prepared quickly, such as in anticipation of an upcoming presentation in which the invention will be disclosed. Provisional applications are generally less expensive to prepare and file, and give inventors time to create a full patent application while reserving rights to whatever subject matter is disclosed in the provisional application.
The Downside of the First-to-File System
Despite enabling more “harmonization” between various foreign national patent regimes, there are drawbacks to the first-to-file system. Many observers believe that a first-to-file system creates a “race to the Patent Office” that may favor institutional filers (large corporations with in-house patent departments) and discourage smaller inventors who may not have access to attorneys and other resources needed to file for patent protection.
Under the previous first-to-invent system, smaller inventors who maintained good records of the development of their invention and were able to prove superior dates of conception and reduction to practice as against others, were more likely to have their rights protected. Now, under the first-to-file system, simply being ahead of their competitors in the act of filing an application is all that matters.
Many believe that such an environment leads to less useful and less fully developed disclosures that are of little use to the public from a teaching perspective, one of the classic motivations for a patent system. Others believe that “pro se” (individual inventors who represent themselves) are put at a disadvantage.
The first-to-file system poses interesting challenges that may take some time to be ironed out. However, it is clear that anyone who wishes to protect their invention stands the best chance by filing as soon as possible. Also, choosing to file a provisional application may provide more time for inventors who may feel the need to take more time to fully develop their disclosures.
Schedule a Consultation with the Patent Attorneys at Metrolex IP
The U.S. patent system favors the first inventor to file an application on a particular invention; therefore, ascertaining a product’s patent eligibility and acting swiftly is paramount. To find out more about how to obtain a patent, schedule a consultation with Metrolex IP Law Group today.