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Why is the (Patent) First to File Important?

First to File Rule

Before 2011, the United States was unusual so far as its patent system went: instead of adhering to the international legal standard of ‘first inventor to file (FITF)’, the US was a ‘first to invent’ country. Then, patent reform occurred when Congress signed the America Invents Act. This piece of legislation instituted a shift to the more prevalent system that went into effect on March 16, 2013. This decision did not go entirely unmarked by many different groups, from patent lawyers to small inventors. Many groups had opinions on why the change was for the better, or the worse.

First to File vs. First to Invent

The difference between the two systems is relatively straightforward. Under the old first to invent system, inventors had a certain amount of legal protection. If multiple patent applications, each listing a different inventor or set of inventors, for the same invention were filed, the patent would be awarded to the inventor who was first to think of the idea and put the invention into practice (presuming other USPTO requirements have been met). However, this system was changed to the standard followed by the rest of the world: the first to file system. Under first to file, being the original creator of an invention does not count for very much. Legal rights to the invention go to the individual or organization which successfully files for a patent first. If two or more inventors file patent applications for similar inventions, it is the inventor who files first that will have the right to pursue their patent. The earlier filed application can also be used as prior art against later applicants.

Protecting Inventors’ Rights under First to File

Obviously, when you don’t have any inherent patent rights to an invention, the game becomes a race to the Patent and Trademark Office. The shrewdest course of action is to file for a patent before you even announce the invention. Although solo inventors and companies often have a wide range of priorities, filing a patent application as quickly as possible is now more important than ever. It is a priority that if not acted upon in a timely manner could result in significant expenditures (R&D, manufacturing, sales, etc.) being for naught.

Technically, the change in patent law does not reward people who steal inventions. It does mean that someone whose idea is stolen and then patented would struggle to assert ownership if the thief was first to file. For this reason some claim that the change in the law privileges corporations which can afford to retain legal teams, and penalizes independent inventors. Under the old law, the superior claim would go to the inventor who could prove they conceived the invention and had actually reduced it, or constructively reduced it, to practice. However, in cases when two people both claimed to be the original inventor, the USPTO was obligated to hold hearings to establish which inventor could present evidence of the invention’s conception, and its reduction practice. One of the reasons that the law was changed was because as with most legal proceedings, these hearings were expensive to conduct. Furthermore, one of the advantages of the first to invent system was supposed to be that it empowered small businesses and inventors to pursue interference cases to protect their industrial property. However, in practice, these cases were impractically expensive. It was rare in the extreme that inventors were ever able to pursue their cases.

Concerns about First to File

A common worry among certain elements of the patent attorney community is that the rise of the first inventor to file system provides succor for patent trolls. Patent troll is a term for entities that buy patents and make their money by invoking patent litigation for infringement, while never actually building anything with the patent themselves.

Frequently Asked Questions

What exactly is the first to file system?

The first to file system is the law of the land in the US governing patent applications. The first person to successfully file a patent application gets the patent rights.

How does this affect inventors?

Unlike the previous system, the person to file the patent application does not have to be the inventor. This means that it’s easier for other parties to come in and grab a patent from under an inventor’s nose while they are still putting an application together. Under the newer system, it is more important for inventors to file patent applications quickly, and not sit on their ideas.

Doesn’t that make the first to file system unfair?

It depends on who you ask. To an inventor that first came up with an idea, it does not seem fair that anyone else should get a patent other than himself or herself under any circumstance. Yet, to a bona fide independent inventor that also came up with the same idea without any knowledge of the first inventor’s contributions, it seems unfair that the first inventor gets to sit on the same idea without filing.

Why did the law change?

The US government undertook a general patent reform project in 2011. Congress passed a piece of legislation called the America Invents Act to change to the same patent system the rest of the world uses.

How does first to file affect my invention?

Filing a patent application should now be given a heightened priority with respect to your other priorities.

How do I protect my invention from being stolen?

Don’t talk to other people about your idea, and file your patent application as soon as you can to avoid someone sweeping in and stealing your idea and the revenue it will earn.

Time is one of the biggest dangers an inventor faces. The work of months, even years, can be squandered by failure to protect your hard work. Don’t let it happen to you or your company. Consult today with a USPTO registered patent attorney at Patent Ingenuity to help you lock in your first to file advantage.

by Samuel K. Simpson
USPTO Registered Patent Attorney, Patent Ingenuity, P.C.

Samuel K. Simpson is a USPTO Registered Patent Attorney and the founder of Patent Ingenuity P.C. He holds a J.D. from The George Washington University Law School and has obtained over 100 granted patents.

Patent Ingenuity is a patent law firm based in Newport Beach, Silicon Valley, and Los Angeles, which has extensive experience in preparing Responses to Office Actions, as well as Appeals. A seasoned patent attorney at Patent Ingenuity can be available to provide you with guidance as to the best path forward to getting your patent application granted.

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