Patent Reform — First to File is Finally Here


As of March 16, 2013, the USPTO officially switched to the first-to-file system—from the first-to-invent system that had previously been a hallmark of U.S. patent law.  Part of the America Invents Act, which was enacted September 6, 2011, the first-to-file system will determine patent priority as between competing inventors based on the patent application’s effective filing date rather than the date the idea for the patent was first invented.

Under the old system, to obtain priority, a patent owner had to be the “first to invent” the product or process in question.  Thus, by keeping detailed research, design and development notebooks, an inventor could claim priority to a patent even if a different inventor filed a patent application first.  Now, it does not matter who was the first to invent; so long as there is no prior art, the first to file is awarded the patent.

A major impetus for this reform was to get U.S. law aligned with the rest of the world, which is almost exclusively on the first-to-file system.  In addition, advocates of the law claim that the act will speed up patent review and cut down on the backlog of applications.  The obvious problem with the reform is that for small businesses and inventors, since the timing of the application is paramount, it is necessary to get lawyers involved in the process at a much earlier stage.  This means paying the expensive but necessary costs associated with filing a patent, such as a prior art search and application writing, during the developmental stage when money and resources may already naturally be spread thin.

Still, this is not as massive a change as it might appear at first glance.  Filing “early and often” has long been a been a preferred patent application strategy.  Furthermore, to be awarded a patent, one must still have independently developed the idea.  Neither the old law nor the new permits latecomers to learn an invention from a third party and seek to patent it for themselves.