The United States long followed the First-To-Invent system, where the United States Patent and Trademark Office (USPTO) would grant a patent to whomever was the first in time to invent. However, as part of the America Invents Act, Congress decided to adopt a First-Inventor-To-File system. The change, which brought the US into alignment with all other countries of the world, applies to patent applications having an effective filing date on or after March 16, 2013. Accordingly, these days a patent will be granted to whomever files a patent application with the USPTO first, regardless of their invention date.
Must be the True Inventor
While this approach alarms some who are concerned that they may lose rights to a patent that would have otherwise been theirs had they simply filed first, two things should be noted: First, if a bad actor copies an inventor’s idea and files a patent application on the subject matter before the true inventor does, the bad actor won’t be entitled to a patent. Only inventors are entitled to a patent, and this rule is underscored by the title of the new system: First-Inventor-To-File. In fact, a “Derivation Proceeding” is provided to ensure that the first person to file the application is actually an original inventor and that the application was not derived from another inventor.
One-Year Grace Period
Second, if an inventor publicly discloses the invention (e.g., at a conference, trade show, etc.) before the filing of a patent application, that disclosure will not be considered prior art and act to prevent the inventor from obtaining a patent. The United States affords inventors a one-year grace period to file a patent application in these situations. However, inventors should be aware that most, if not all, other countries do not honor the one-year grace period, and so care should be taken if inventors plan to seek protection in foreign jurisdictions.
Conflicts Between Inventors are Rare
If that’s not enough, a report by IP WatchDog shows that, in reality, the conflict is very rare. For example, in 2007, interference proceedings between contesting parties arose in fewer than one percent of all patent applications. And, of these, the patent was awarded to the second-to-file party only 7 times. In addition to being rare, the proceedings were also expensive: an MHM Law survey showed that the average cost was over $650,000. In fact, one of the motivations for first-to-file systems is to prevent additional litigation that also serves to cloud patent rights.
USPTO’s First-Inventor-To-File FAQ
For more information, see the USPTO’s First-Inventor-To-File FAQ page.