To protect your invention in the U.S one need to get a patent issued from the U.S. patent and trademark office. Obtaining the patent rights prevents others from getting a patent for the same invention. . Innovation happens in many industries along parallel lines hence multiple inventors could develop the same invention around the same time and whoever files first would win. This could lead to a race for the patent office.

Table of content

From “First to Invent to “First to File”

What Difference  Between First to Invent and First to file?

concerns about First to File

Why is it Important for the (Patent Holder) to Be First to File?

Protecting inventors’ rights under First to File

From “First to Invent to “First to File”

September 16th, 2011, was the date that the America Invents Act was enacted into law. The U.S. Patent Law was significantly modified by the AIA to ensure the quality of U.S. Patents and Trademark Office (USPTO), and to harmonize U.S. Patent Law with other countries’ patent laws. While some changes became effective immediately after the AIA was enacted, others were delayed until later dates. The most important change, one that had a direct and immediate impact on patent filing decisions, was scheduled for March 16, 2013.

The U.S. patent law changed from being a “first-to-invent” system to one that is “first to file” on March 16, 2013. The current “first-to-invent” system awarded patents to the first person who invents a claimed invention. This applies even if the later inventor is the first to apply for patent registration. However, the incoming “first-to-file” system will give priority to the inventor who files an application for an invention, even if they happen to be the later inventor.

What Difference Is There Between First Inventor-To-File And an Inventor Who First Came Up with Idea?

The differences between these two systems are relatively easy. The old first-to-invent system gave inventors who kept details of conception and diligence in reducing the invention to workable working systems a certain level of legal protection. Multiple patent applications for the same invention, each listing a different inventor, or set of inventors, would result in the patent being awarded to the first person to have the idea and put it into practice.

However, this system was modified to follow the standard used by much of the world: the first-to-file system. The original conception date of an invention is no longer important under first to file. The individual or organization that files the patent application first is entitled to legal rights to the invention. Two or more inventors may file patent applications for the same inventions. The inventor who is first to file the patent application will be allowed to pursue their patent. The first-filed application can be used against other applicants as prior art.  The change from being the first inventor to being first-to-file has certain advantages in eliminating confusion as to who to credit the invention to: the filing date with the patent office is easy to determine, unlike the prior system where the filing date is not necessarily the date of the invention.  However, the present first-to-file system adds more work and expense upfront to account for the cost of quickly preparing and filing high quality patent applications.

Concerns about First to File

America is now closer to its global counterparts in patent structure and first-to-file system. This shift will undoubtedly have implications for inventors seeking an American patent.

There is now an incentive to file your USPTO patent application as soon as possible. You can sue for infringement if you file your patent application as soon as possible.

Not all the consequences of the first to file system are positive. Many believe it will discourage small inventors/businesses who don’t have the resources or access the attorneys necessary to file for patent protection, or provisional patent protection, before a bigger company.  These smaller inventors could have spent their time inventing their invention, finding investors and simply keeping track of the progress of their invention under the old first-to-invent system. They must now “race” against other competitors to file with USPTO.

Why is it Important for the (Patent Holder) to Be First to File?

A “first to file” patent system has some advantages. It’s easier to identify who has a right to a patent, since the filing date is all that matters. The patent’s owner or investors have more certainty. This certainty can help you raise the money needed to file a full-blown patent application.

The first to submit system also rewards diligence. Early applications are eligible for patent rights, which is a bonus over those who procrastinate. It is therefore more important to file for a patent promptly.

Here are some strategies you can use to seek patent protection if you’re concerned about being the “first to file”.

  • Efficient patent Management – You will need a strategy to manage your patent portfolio and encourage early disclosure of new inventions. You will need a patent manager to review all invention submissions if you are responsible for overseeing a company. You should quickly review them and make a decision.
  • How to File – Getting a patent attorney immediately can help you fill out your application quickly and get it submitted. You can also draft the provisional Patent Application yourself. Just make sure you do your research and use free tools such as those at www.inventiv.org.

Do not wait to file the non-provisional application A provisional patent application is smart because it grants your invention the status of “Patent Pending” and protects it for a year. However, the patent application process isn’t complete as you will have to file for a non-provisional application within the same year in order for your patent application to be reviewed by the patent office and issued if the application is allowed or granted by the patent office.

Protecting inventors’ rights under First to File

To win the race to the Patent and Trademark Office, you should apply for a patent before the invention is announced because such an announcement can be used to reject your subsequent patent application.  In the US there is a one-year grace period for filing your application, but such grace periods are not available in many other countries.  As such, even though solo inventors and companies may have many priorities, it is important to file a patent application quickly and file first.