First to File (FTF) vs. First to Invent (FTI): The History of Patent Protection

By John DiGiacomo

Historically, patent lawyers, scholars, lawmakers and judges have vigorously debated the question of who should be entitled to the legal protections afforded by a patent — the inventor who first invented the invention or the one who first filed the patent application. In this ongoing debate, the competing factions have been known as First to File (“FTF”) proponents versus the First to Invent (“FTI”) proponents.

For over 100 years, the United States patent system favored the FTI legal doctrine. In practice, this meant that a patent was awarded to whichever inventor first conceived of the invention and then either reduced it to practice by fashioning a working prototype or by filing a patent application. Over the years, three main arguments have been made in support of the FTI doctrine:

  • An FTI system promotes innovation and creativity since actual inventors are rewarded, not just whoever was savvy enough to get a patent application on file
  • An FTI system is required by the US Constitution which gives Congress the power to enact patent laws but specifically states that patents are to be granted to “Inventors” — see US Const., Art I, Sec 8, Cl. 8
  • An FTI system is more fair and efficient since it removes the pressure on inventors to “race to the patent office”

The FTF proponents countered by arguing that the FTI system gave incentives to delay filing for patents, and that was to be avoided. The quicker inventions are patented, the quicker they are brought to market (or can be the basis for further innovation). With respect to the constitutional argument, FTF called “foul” since at least some inventor was obtaining the patent, not some random person or business unconnected to the invention. To further undercut the argument, some FTF proponents began to refer to themselves as supporters of a First-Inventor-to-File (“FITF”) system.

With respect to efficiencies, the FTF proponents pointed out that, historically, the FTI system created substantial inefficiency as patent approvals were delayed by competing inventors trying to prove that they were the first to invent. Further, the FTI system created a complex set of judicial decisions and administrative opinions about what it meant to be the “first to invent.” For example, when the US had its FTI system, when two inventors claimed that they were the first to invent, the US Patent Office conducted what was called an “Interference Hearing” before the Board of Patent Appeals and Interferences (“BPAI”). Interference Hearings were time consuming, legally complex and expensive. Further, adverse decisions by the BPAI could be appealed to federal courts which caused more delay and expense. By contrast, an FTF system is much simpler — the first inventor to file is entitled to the patent and complicated and expensive factual inquiries, administrative and judicial, are avoided.

FTF proponents also noted that the international consensus supported the FTF position. As of a decade ago, the US was only one of three countries that had an FTI system (Canada and the Philippines were the others).

That, however, changed in 2011 when Congress enacted the America Invents Act (“AIA”). The AIA converted the US from a First-to-Invent system to a First-to-File system for patents filed after March 15, 2013. Canada and the Philippines have also converted their patent systems to conform with the global consensus.

For more information or if you have an invention that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

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