From First to Invent to First to File – What Is It?

The last elements of the America Invents Act went into effect on March 16, 2013 in the US. Among the provisions that went in to effect on March 16 was the change from “First to Invent” to “First to File”. Under the old standard of “First to Invent”, the default right to ownership of rights to a patent went to the first person, or group of persons, to invent the invention.


Others could argue various exceptions to the default rule, but the burden of proof was on the challenger, and the procedural burden and the cost burdens were substantial. And if two different parties invented the same invention, both were put to their proofs to show who invented first.


Under the old system, there was certainly an incentive for scientists and technicians to push their respective technological boundaries in order to be first to invent something new and of value.


Under the new “first to file” system, the date when someone invents an invention is irrelevant. All that matters is how fast he/she can get a patent application on file with the US Patent Office. Again, there are exceptions that can be argued, but the default conclusion is that the first person to file a patent application has the default right to ownership of any resulting patent.


The effective filing date of the patent application is now much more important, almost to the point of being all that matters. So let’s look at the meaning of the patent filing date.


The effective filing date is the earlier of (1) the filing date of a patent or patent application including a claim to the invention, or (2) the filing date of the earliest priority application (i.e., the earliest filed provisional, non-provisional, international, or foreign application) to which a patent or patent application, including every claim that is ever present in that application, is entitled. Assuming all claims ever present in a patent application are entitled to the same filing date (which may or may not be true), this means a claim is entitled to the filing date of the earliest filed application which teaches the technology recited in that claim.


Under the novelty requirement of the provisions of the new law, a claim can be rejected, and ultimately disallowed, if the technology recited in the claim was described in a patent or printed publication, or was in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. By contrast, under the old law, only information publicly available before the invention was invented was available for use in defeating a claim to patentability.


Under the new patent law, an inventor can still rely on a one-year grace period to file his/her application, which disqualifies certain disclosures for use against the claims of the application, but only where that information came from, is sourced from, the inventor. The grace period is designed to ensure that the patentability of an invention is not defeated by an inventor’s own disclosures, disclosures of information obtained from the inventor, or third-party disclosures that include the inventor’s previous public disclosures. However, any disclosure by any third party automatically disqualifies/terminates the first inventor’s patent rights.


To qualify for the inventor disclosure exception, the disclosure by the inventor or of the inventor’s work must have been made one year or less before the effective filing date of a claimed invention. And there is substantial disagreement in the legal/patent community regarding how closely the language of the patent application must track the language of the non-disqualifying disclosure. Initially, the US Patent Office said the language must track almost word-for-word. They have now back off from that, but how far? No one knows! And what will the courts do with that exception? No one knows!


So the effective filing date of an application is central to the First to File provisions of the new law. Among other things, the new law effectively prohibits an applicant from receiving a patent if the claimed invention was described in a patent or a published application naming another inventor filed before the filing date of the application containing the claimed invention. This rule applies to any patent or patent application which contains, or is at any time amended to contain, a claim to an invention having an effective filing date on or after March 16, 2013. Any application which claims priority to such an application also falls under the first-inventor-to-file provisions. Yes, the law says that there are a few escape provisions. But only those with substantial legal budgets can afford them.


So once again I ask, what is our government doing to promote new jobs being created by small businesses?

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