Don't Wait - Be the First to File

One of the most significant changes under the Leahy-Smith America Invents Act (the “AIA”) is a shift of the U.S. from a "first-to-invent" system to a "first-to-file" system.

The prior, first-to-invent, system sought to grant patent protection to the first to invent, not necessarily the first to file a patent application in the Patent Office.  So, if you were the first to invent, but the second to file patent application, you could use an interference proceeding to prove that you were entitled to a patent over an inventor who invented after you, but filed an application before you did.

Now, it is a race to the Patent Office! 

Any applications having an effective filing date on or after March 16, 2013, fall under the "first-to-file" system.  This means that, with very narrow exceptions, the first inventor/applicant to file a patent application will be entitled to patent protection, even if they were the second to invent.

The "first-to-file" rule does not mean that a second inventor (first filer) will be entitled to a patent if the second inventor’s invention was derived from the first inventor.  The rule requires that both inventors invented the same invention independently of one another.  There is a timing issue involved, though.  The second filer (first inventor) can file a petition for a derivation proceeding against the first filer, but the petition must be filed within one year of the publication of the second filer's application.  The second filer can also pursue a civil action (which can be filed within one year of issuance of the first filer's application) in lieu of the derivation proceeding, but such an action must be filed within 10 years from the date of the alleged derivation or one year after the Patent Office was made aware of the derivation, whichever comes first.

So what can inventors do in light of the "first-to-file" rule?

  • Assess your potential invention early to determine whether it is worth patenting.
  • File a provisional patent application to receive the earliest possible filing date.
  • Publish invention disclosures as defensive publications against other filers (but remember that you must file an application in the U.S. Patent Office within one year of any such public disclosure and, in absolute novelty countries, any such public disclosure prior to filing will be a complete bar to obtaining a patent).
  • Keep well documented records outlining your conception of the potential invention and its development.  You may need these records in an action against an earlier filer.

The bottom line is, be the first to file!  Procrastination can result in a loss of your patent rights, even if you are the first to file.

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