The New "First to File" Law

The New US "First to File" Law

A number of my clients have asked me how the “first-to-file” provisions of the new America Invents Act might affect them. First a little background ...

The Leahy-Smith America Invents Act (AIA) was signed into law on September 16, 2011 and its central provisions went into effect on March 16, 2013. The AIA enacts the most extensive changes to US patent law in last 60 years. The AIA provides a number of new methods to challenge issued patents, accelerated examination options, and ways for third parties to submit publications of possible relevance to challenge pending patent applications. But one of the most fundamental changes included in the AIA is that it transitions the US system for legal ownership of an invention from “first-to-invent” to “first-to-file.” (It should be noted that America's first-to-file system is more accurately termed a first-inventor-to-file system to highlight the difference from most other countries' first-to-file systems which do not require the filer to be the inventor.)

Prior to the passage of the AIA, the United States was the only country to award patent rights to the first person to invent something, rather than the person who first files a patent application. Under the first-to-invent system it was important for an inventor to document his or her progress from the conception of the invention to its "reduction to practice," since it might become necessary to use this documentation. If two patent applications were filed for the same invention within a year of each other, an "interference" hearing based on the documentation could be held to determine the legal inventor.

The United States' first-to-invent system was discarded for the current first-to-file system because interferences were complicated and costly, and the first-to-invent system was not in harmony with the patent systems of the rest of the world. Under the new first-to-file system, whoever files a patent application with the Patent Office first has the rights to an invention, regardless of the date of conception of the invention. Therefore, there is a strong motivation for inventors to file with the patent office more quickly than under the previous system.

I now recommend that, whenever appropriate, clients take advantage of the option to file one or more provisional applications during the development process of an invention, especially in hot fields of technology. Because a non-provisional (i.e., standard) patent application must be filed within a year of the initial provisional application filing, this can provide valuable protection when there are substantial innovations over the course of that year. The filing of multiple provisional applications doesn’t have to be costly since they can be shorter and therefore less expensive to prepare than non-provisional patent applications, and the filing fee of only $130 for a “small entity” is roughly an eighth of the non-provisional application filing fees. Provisional applications don’t require many of the formalities of a non-provisional patent application, such as an Abstract, Background of the Invention, Summary of the Invention, and claims, i.e., the formal legal language that defines the metes and bounds of the patent. (It should be noted that many foreign countries do require claims in provisional patent applications. So if foreign applications are to be based on the US applications, then claims should be included in provisional applications.) However, I strongly advise against scrimping on the Detailed Description of the Invention section of provisional patent applications, since an “enabling disclosure” is legally required and which details will prove useful during the prosecution of a patent application is often hard to predict.

It is generally considered that the first-to-invent system benefited small inventors who could not effect a reduction to practice or a patent application filing as quickly as large corporations. While this is true, I believe a number of other aspects of the patent system present far greater handicaps to the small inventor. I will address that issue in a future newsletter.