First To Invent To First To File

January 10, 2023

As of March 16, 2013, the United States adopted a first-to-file patent system as a result of the America Invents Act (AIA). Since a patent applicant who files their patent application first is entitled to patent rights regardless of their date of invention, the switch to a first-to-file system is crucial. However, the first-to-invent laws continue to apply to patents submitted before March 16, 2013.

First to Invent

Under the first to invent the method, the patent office initiates processes to ascertain who was the first to invent if multiple applicants submit patent applications claiming the same subject matter.

The prior “first to invent” patent system applies to the following U.S. patent applications and patents:

Applications for patents submitted prior to March 16, 2013.
Patent applications submitted after March 16, 2013, or after if: (1) the application asserts priority to a prior application submitted before March 16, 2013; and (2) all claims in the patent or patent application exclusively contain information that was disclosed in the earlier patent application.

Understanding First to File Patent System

When a person invents anything for competitive purposes, they have the right to apply for a patent, and the first person to file typically has the right to market the innovation. This regulation is known as the “First to File” rule. The first person to apply usually has the right to successfully filed patent applications when multiple parties are attempting to file the same patent.

US patent laws now prioritize who applied for a patent first rather than who invented something first. Whoever files first at the USPTO basically wins the right to submit an application for a patent on their idea. The first person to submit a patent application will benefit.

To be clear, first-to-file does not automatically entitle the filer to a patent. It does imply that the inventor who files first will have the right to pursue their patent in the event that there are two or more inventors who independently file for identical inventions. It might also imply that the previously filed application could be utilized as prior art to disqualify later applicants.

The new “first to file” patent system applies to the following U.S. patent applications and patents:

Patent applications submitted on or after March 16, 2013.
Patent continuation-in-part (CIP) applications submitted on or after March 16, 2013.

Congressional Justification for Switching to First-to-File

In the past, the United States was one of the only developed nations to adopt the “first-to-invent” system to give patent rights priority. This meant that the superior claim would go to the inventor who (I) originally thought of the invention and (ii) first put it into use. The USPTO would offer hearings for each person who asserted they were the original inventor if they had evidence of conception and use of the invention.

It should come as no surprise that these proceedings were costly, time-consuming, and challenging in cases where it was difficult to pinpoint the exact moment of invention. In a period of growing globalization, the fact that the United States retained a different filing system than the majority of other nations also led to legal problems.

Congress aimed to update many facets of American patent law by establishing the American Invents Act. For patent applications submitted after March 16, 2013, the first-to-file rule replaced first-to-invent.

The revised section of federal law, 35 U.S.C. 102, states that “a person shall not 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), or in an application for patent published

Simply put, the application’s “effective filing date” with the USPTO is the date that must be taken into consideration. The majority of inventors will discover that their filing date will control however there are some exceptions, notably when a patent has numerous claims or when a foreign patent registration date is involved. Arguments about the exact date that you created your tool, machine, formula, or chemical will no longer uphold your rights.

Competitive Edge

The ability to commercialize their invention in a commercial environment is given to inventors through the patent procedure. This is one of the requirements to get a patent. The patent office demand that the applicant has a competitive advantage to market the product during the patent’s lifetime. The inventor is then free to market their patented creation anywhere in the world or in the United States. Although the first to file may get the patent first, the procedure may involve numerous denials for that person. These rejections can allow another applicant to be granted the patent.

First to File: Benefits

The new U.S. first-to-file patent system offers various advantages to patent owners, including:

Simplification: Simplifies the process of deciding who is qualified to receive a patent for an innovation.
Certainty: After a patent is issued, the patent owner and investors have more assurance that the patent rights will remain in their possession.
Work ethic is rewarded: The patent rights over another inventor who delays will go to the diligent patent applicants who file their applications early.

Patent Strategies

The following patent strategies should be considered by all individuals and companies for first to file patent system:

Efficient Management of Patents. Implement a quick-review patent management system for your business that satisfies the following criteria:

Encourages and makes it easier for company innovators to disclose innovative innovations early.
Patent Manager: All inventions should be submitted to the Patent Manager, who should be one person within the organization.

Review Quick. The patent manager and/or patent committee should swiftly review any filed invention disclosures.

Early patent ruling: Early action should be taken to decide what will be done with the invention, for example:

Whether or not to submit an application;
Immediately submit a self-drafted provisional patent application; or
Immediately submit a professionally designed provisional or non-provisional patent application created by a patent lawyer.
2. Continuous Evaluation:
To decide when to retain a patent attorney to draught the non-provisional patent application, the patent manager should continuously examine the development and commercial viability of new ideas.
3. Share with the patent attorney:
The invention should be sent right away to the patent attorney for the creation of the non-provisional patent application once the decision to patent the invention has been taken.

2. File Provisional Applications:
You should think about submitting a provisional patent application early on in the invention process to define a filing date for the creative subject matter. During the early stages of the invention process, you might need to submit a number of provisional patent applications, often known as “rolling provisional patent applications,” as you enhance your innovation.

3. File Non-Provisional Applications Sooner:
Although you will receive an early filing date if you file a self-drafted patent application, the filing date is only valid for the subject matter described in the patent application. The possibility of filing a non-provisional patent application, which normally will disclose additional subject matter not disclosed in the provisional patent application, should thus be discussed with your patent attorney as soon as possible.

How to lose the competition to file a patent first to the Patent Office

Weak Beginning: Obviously, filing after someone else has done so for a comparable innovation is a surefire way to lose the race. You can avoid this by disclosing your innovation to the general public before submitting a patent application. If you have previously demonstrated your innovation to others, you should think about applying for a patent as soon as possible, provided you are still within the one-year grace period following the earliest date of public disclosure.
Grace Period of One Year for Inventor’s Own Public Disclosure: Of course, starting at all is preferable to a shaky one. Additionally, you only have a year after publicly disclosing your innovation to file for a patent. If you don’t file within the allotted year of time, you lose your patent rights.
In the case of utility patents, the submission of a non-provisional application marks the end of the first-to-file race rather than the grant of a utility patent because a temporary application is only a placeholder.
In spite of the fact that the finished product is not yet ready for release, it is crucial to converting provisionals into non-provisionals. You can always add more features by submitting a continuing application, but if you don’t submit the non-provisional, you won’t be able to retain the provisional’s earliest priority date.
Strong beginning, poor conclusion: Even if you had a solid start to the race with an early priority date, you could still come in last. Failure to convert a provisional into a non-provisional within the allotted year is a frequent cause of loss.
It is still possible to lose the race even with a timely provisional filing if you wait too long to file the non-provisional. This can happen if the non-provisional needs to include a new topic matter. The new features receive a later priority date since the new content is added after a later date.

Conclusion

The first-to-file method brings the US patent system closer to that of its international competitors. Undoubtedly, this change will have an impact on inventors who are looking to obtain a US patent.

The most obvious benefit is that there is now a strong incentive to submit your patent application to the USPTO as soon as is practically possible. In the end, the earlier you register, the earlier you can forbid competitors from exploiting your idea, and the earlier you can initiate a lawsuit for infringement.

A so-called provisional patent is one of the most popular techniques for inventors to prove an earlier filing date. A formal patent claim, declaration, or details regarding previous art are not necessary for a provisional application but are typically present in “full” patent applications. Therefore, obtaining a provisional patent is a little simpler and less expensive. Another benefit of a provisional patent is that it allows the inventor to refer to their idea or product as “Patent Pending.”

The effects of the first-to-file mechanism are not always favorable. Some people think it will deter smaller innovators from filing for patent protection before a bigger corporation beats them to the punch because they lack the funds or access to counsel. These smaller inventors could have spent their time developing their innovation and locating investors under the previous first-to-invent method instead of just keeping track of the process. They currently have to “race” other applicants to file with the USPTO.

Some experts on patent law worry that the first-to-file approach will support patent trolls—entities that only purchase patents and file lawsuits for infringement without creating anything new or using the patents in actual practice.

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First To Invent To First To File

Table of Contents

First to Invent

Understanding First to File Patent System

Congressional Justification for Switching to First-to-File

Competitive Edge

First to File: Benefits

Patent Strategies

How to lose the competition to file a patent first to the Patent Office

Conclusion

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