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.

The America Invents Act: What Changed in Practice

The America Invents Act (AIA) of 2011 did more than convert the US to a first-inventor-to-file system. It fundamentally restructured the prior art framework. Under the AIA’s 35 U.S.C. § 102, what matters is the “effective filing date” — the priority date. If prior art exists before your effective filing date, it is prior art, period. The complex factual inquiries about who conceived what and when are, for patents filed after March 16, 2013, legally irrelevant to the patentability analysis. The AIA also replaced the Interference proceeding with the Derivation proceeding — independent simultaneous invention by two parties no longer gives rise to a USPTO challenge. The second inventor to file simply loses, even if their conception was earlier.

The Grace Period Under the AIA

The AIA retained a one-year grace period for inventors, but it operates differently from the pre-AIA grace period. Under 35 U.S.C. § 102(b)(1), disclosures made by the inventor within one year before the effective filing date are excluded from prior art. This protects inventors who publish or disclose before filing. However, this grace period does not protect against independent third-party disclosures: if a competitor independently publishes a disclosure of the same invention after your disclosure but before your filing date, that publication may constitute prior art. The practical lesson: disclose and file simultaneously, or file before disclosing.

International Harmonization and the PCT

The AIA’s FTF system brought the US largely in line with Europe, Japan, China, and most other major patent systems. However, important differences remain. The US grace period for inventor disclosures is more generous than the European Patent Convention, which generally provides no grace period at all. A US inventor who publishes results before filing can still obtain a US patent but may forfeit patent rights in Europe and other jurisdictions without grace periods. The Patent Cooperation Treaty (PCT) provides a mechanism for filing a single international application that preserves patent rights in 150+ member countries. Filing a PCT application within 12 months of the earliest priority date is a standard part of any international IP strategy. Contact the patent lawyers at Revision Legal at 231-714-0100 to discuss filing strategy for US and international patent protection.