What Does the First-To-File Rule Mean For My Patent Application?

What does the transition to a first-to-file system mean for your patent application?

By , Attorney · Benjamin N. Cardozo School of Law

U.S. patent law grants an exclusive monopoly to owners of valid patents. To obtain a patent, one must file an application with the U.S. Patent and Trademark Office (USPTO), the federal agency charged with administering this system. A primary purpose of the patent is to exclude others from using the same invention or from obtaining a patent on the same invention. But what if two inventors create a substantially similar invention and file an application around the same time? Who is entitled to the patent?

For many years, the United States awarded the patent to the applicant who could prove that he or she created the invention first. But through the enactment of the America Invents Act, the U.S. has shifted to instead awarding the patent to the applicant who files the patent application first.

This shift, which became effective on March 16, 2013, has important impacts on how inventors interact with the patent system in order to secure their rights.

Rationale of Congress in Shifting to First-to-File System

Historically, the U.S. had been one of only a few developed countries to use the "first-to-invent" system to prioritize patent rights. This meant that the inventor who (i) first conceived the invention and (ii) first reduced the invention to practice would have the superior claim. If two people claimed to be the initial inventor, the USPTO would hold hearings for each to present evidence of the conception and practice of the invention.

Not surprisingly, these proceedings were expensive and time-consuming, and necessarily difficult in situations where the precise moment of invention was unclear. The fact that the U.S. maintained a different filing system from most other countries also created legal complexities in an era of increasing globalization.

By passing the American Invents Act, Congress sought to modernize many aspects of American patent law. Among the changes was the transition from first-to-invent to first-to-file for patent applications filed after March 16, 2013.

Under the revised portion of the federal law, 35 U.S.C. § 102: "A person shall be entitled to a patent unless—the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or... the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."

Put simply, the critical date is the one when the application was "effectively filed" with the USPTO. While there are exceptionsparticularly for when a patent contains multiple claims or when a foreign patent registration date is involvedmost inventors will find that their filing date will control. Arguments over when you invented your widget, device, formula, or chemical will no longer establish your rights.

Ramifications of a First-to-File System for Inventors

The first-to-file system puts America closer to other global peers in the way it structures its patent system. Undoubtedly, this shift will have ramifications for inventors who seek an American patent.

Most obviously, there is now a clear incentive to file your patent application with the USPTO as soon as is practical. After all, the sooner you file, the sooner you can exclude others in the market from using your invention and the sooner you can sue for infringement.

Among the most common ways for inventors to establish an earlier filing date is through a so-called provisional patent. A provisional application is not required to have a formal patent claim, declaration, or information about prior art, materials that are usually included in a "full" patent application. Thus, provisional patents are somewhat easier and less expensive to obtain. Another advantage of a provisional patent is that the inventor can use the term "Patent Pending" in connection with the product or invention. This can sometimes help with sales or royalty negotiations. Learn more about provisional patents and their application requirements here.

The consequences of the first-to-file system are not necessarily all positive. Some believe that it will discourage smaller inventors who lack the resources or access to attorneys to file for patent protection (or even provisional patent protection) before a larger company beats them to the punch. Under the old first-to-invent system, these sorts of smaller inventors could spend their time designing their invention and finding investors, simply maintaining records of their invention's development. Now, they must "race" against competitors to file with the USPTO.

Some patent law scholars also fear that the first-to-file system will encourage patent trolls—entities that simply buy patents and sue for infringement, but do not actually invent or use the patents for practical purposes.

In the grand scheme of patent law, the shift to first-to-file is relatively new. The courts and the USPTO are likely to continue working out the kinks of the system for years to come.

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