First to file and first to invent: Difference between revisions

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{{Short description|Concepts in patent law}}

'''First to file''' and '''first to invent''' are legal concepts that define who has the right to the grant of a [[patent]] for an [[invention]]. The first to file system is used in the majority of countries, with the notable exception of the [[United States]], which operates a first to invent system. <ref> Jane K. Winn, Benjamin Wright, ''The Law of Electronic Commerce'', Aspen Publishers Online 2000, 2006-2 Supplement, p. 10-6, ISBN 0735516480</ref>

{{TOCrightpatent law}}

'''First to file''' and '''first to invent''' are legal concepts that define who has the right to the grant of a [[patent]] for an [[invention]]. Since March 16, 2013, after the United States abandoned its "first to invent/document" system, all countries have operated under the "first-to-file" patent priority requirement.<ref>{{cite news |title=Patent Reform Refuses To Die, Congress Keeps Cashing In |author=Zach Carter |url=http://www.huffingtonpost.com/2011/09/06/patent-reform-drags-on_n_951128.html |newspaper=The Huffington Post |date=11 June 2011 |access-date=31 July 2013}}</ref>

== First to file ==

In a first -to -file system, the right to the grant of a patent for a given invention lies with the first person to file a patent application for protection of that invention, regardless of the date of the actual invention.

== First to disclose ==

The concept of a [[grace period]], under which early disclosure does not prevent the discloser from later filing and obtaining a patent, must be distinguished here from the FTI system.<ref name=kravets>[https://techcrunch.com/2013/02/16/first-to-file-a-primer/ Kravets: "First-To-File Patent Law Is Imminent, But What Will It Mean?"]</ref> Germany and the UK formerly had a concept of the grace period.<ref name=geresearch>[http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:52002DC0002:EN:HTML ''Report from the European Commission to The European Parliament and European Council'' "An assessment of the implications for basic genetic engineering research of failure to publish, or late publication of, papers on subjects which could be patentable as required under Article 16(b) of Directive 98/44/EC on the legal protection of biotechnological inventions"]</ref> Both FTI and grace period systems afforded early discloser protection against later filers. The FTI system allowed non-disclosers to overturn established parties, whereas the grace system only protects early disclosers. The US moved to a grace system on 16 March 2013, which has been termed "first-to-disclose" by some writers.<ref name=kravets/>

== First to invent ==

The United States uses a ''first-to-invent'' system, unlike most other countries in the world. Invention in the U.S. is generally defined to comprise two steps: (1) conception of the invention and (2) reduction to practice of the invention. When an inventor conceives of an invention and ''diligently'' reduces the invention to practice (by filing a patent application, by practicing the invention, etc), the inventor's date of invention will be the date of conception. Thus, provided an inventor is diligent in actually reducing an application to practice, he or she will be the first inventor and the inventor entitled to a patent, even if another files a patent application, constructively reducing the invention to practice, before the inventor.<ref>[http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138_05.htm 2138.05 "Reduction to Practice" [R-5&#93; - 2100 Patentability<!-- Bot generated title -->]</ref>

However, the first applicant to file has the ''[[prima facie]]'' right to the grant of a patent. Should a second patent application be filed for the same invention, the second applicant can institute [[interference proceedings]] to determine who was the first inventor (as discussed in the preceding paragraph) and thereby who is entitled to the grant of a patent. Interference can be an expensive and time-consuming process.

Canada, the Philippines, and the United States were among the only countries to use ''first-to-invent'' systems, but each switched to first-to-file in 1989, 1998, and 2013 respectively.

=== Example ===

Assume Tom conceives of a new [[mousetrap]] on January 1, 2006. Tom works diligently from January 1, 2006, to February 1, 2006, to prepare a patent application, and Tom files his patent application on February 1, 2006. Thus, Tom constructively reduced his invention to practice on February 1, 2006. Assume Jerry conceives of the same mousetrap on January 10, 2006, and diligently files a patent application on the new mousetrap on January 20, 2006. Under the first-to-invent system, Tom is entitled to the patent on the mousetrap, because he conceived the mousetrap before Jerry and still worked diligently to reduce it to practice by filing. Actual and constructive reduction to practice should be distinguished. Filing a diligently prepared application constitutes constructive reduction to practice only and can be antedated by evidence of an actual reduction to practice.<ref>[http://www.uspto.gov/web/offices/pac/mpep/documents/0700_715_07.htm#sect715.07 715.07 Facts and Documentary Evidence [R-3&#93; - 700 Examination of Applications<!-- Bot generated title -->]</ref> If both Tom and Jerry claimed the same invention, the USPTO would institute an interference proceeding between Tom and Jerry to review evidence of conception, reduction to practice and diligence.

AsInvention ain furtherthe extensionU.S. ofis thegenerally example,defined assumeto Tweetycomprise conceivedtwo steps: (1) conception of the sameinvention mousetrapand on(2) December[[reduction 31,to 1990.practice]] of Tweetythe neverinvention. told anyoneWhen aboutan theinventor mousetrapconceives andof didan notinvention workand on''diligently'' reducingreduces the mousetrapinvention to practice for(by manyfiling yearsa duepatent toapplication, financialby reasons.making, testing, Tweetyand finallyimproving actuallyprototypes, reducedetc.), the mousetrapinventor's todate practiceof oninvention Februarywill 15,be 2006the date of conception. BecauseThus, Tweetyprovided didan notinventor diligentlyis workdiligent toin reduceactually thereducing inventionan application to practice, inhe theor periodshe beforewill others' conception ofbe the samefirst invention,inventor heand isthe notinventor entitled to a patent, overeven Tomif oranother files a patent application, constructively reducing the invention to practice, before the Jerryinventor.<ref>[http://www.uspto.gov/web/offices/pac/mpep/documents/0700_715_07_a2100_2138_05.htm#sect715.07a 7152138.07(a)05 Diligence"Reduction -to 700Practice" Examination[R-5&#93; of Applications<!-- Bot2100 generated title -->Patentability]</ref>

However, the first applicant to file has the ''[[prima facie]]'' right to the grant of a patent. Under Shouldthe afirst-to-invent secondsystem, patentwhen applicationtwo be filedpeople forclaim the same invention, the secondUSPTO applicantwould canconduct institutean [[interference proceedingsproceeding]] tobetween determinethem whoto wasreview theevidence firstof inventorconception, (asreduction discussedto in the preceding paragraph)practice, and thereby who is entitled to the grant of a patentdiligence. Interference can be an expensive and time-consuming process.

== Canada's change to first-to-file ==

Canada changed from FTI to FTF in 1989. One study by researchers at [[McGill University]] found that contrary to expectations "the switch failed to stimulate Canadian R&D efforts. Nor did it have any effects on overall patenting. However, the reforms had a small adverse effect on domestic-oriented industries and skewed the ownership structure of patented inventions towards large corporations, away from independent inventors and small businesses."<ref>[https://ssrn.com/abstract=1394833#%23 Lo and Sutthiphisal: "Does it Matter Who Has the Right to Patent: First-to-Invent or First-to-File? Lessons from Canada", April 2009, NBER Working Paper No. w14926]</ref>

== US change to first-inventor-to-file (FITF) ==

The [[America Invents Act]], signed by Barack Obama on 16 September 2011,<ref>[https://obamawhitehouse.archives.gov/the-press-office/2011/09/16/president-obama-signs-america-invents-act-overhauling-patent-system-stim 16 Sept 2011 whitehouse.gov press release re signature of AIA]</ref> switched the U.S. right to the patent from a "first-to-invent" system to a "first-inventor-to-file" system for patent applications filed on or after 16 March 2013 and eliminated interference proceedings.<ref name=aiaeffective>[http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf USPTO: "America Invents Act: Effective Dates"]</ref>

Many legal scholars<ref>[http://www.docs.piausa.org/Article%20I%20and%20the%20First%20Inventor%20to%20File-%20Patent%20Reform%20or%20Doublespeak_%20=%20IDEA-vol50-no3-glenn-nagle.pdf Glenn and Nagle: "Article I and the First Inventor to File: Patent Reform or Doublespeak?", in IDEA—The Intellectual Property Law Review, Volume 50, Number 3 (2010)]</ref><ref>[http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/johnmars6&div=13&id=&page= Simon: "The Patent Reform Act's Proposed First-To-File Standard: Needed Reform or Constitutional Blunder?", in ''The John Marshall Review of Intellectual Property Law'', 2006]</ref><ref>[http://www.rearden.com/public/090413_First_to_File_scholarly_papers_in_last_10_years-1.pdf Selective compilation of papers on FTF constitutionality published between 2001-2009 (9 papers)] {{webarchive|url=https://web.archive.org/web/20110720004424/http://www.rearden.com/public/090413_First_to_File_scholarly_papers_in_last_10_years-1.pdf |date=2011-07-20 }}</ref> have commented that such a change would require a constitutional amendment. [[Copyright Clause|Article I, Section 8, Clause 8]] of the US Constitution gives Congress the power to "promote the Progress of&nbsp;... useful Arts, by securing for limited Times to&nbsp;... Inventors the exclusive Right to their respective&nbsp;... Discoveries.” These scholars argue that this clause specifically prohibits a first-inventor-to-file system because the term "inventor" refers to a person who has created something that has not existed before.

The change has not been short of detractors. For example, the [[IEEE]] stated in its submission to the [[House Judiciary Committee]], charged with the study of the Patent Reform Act of 2007, that "We believe that much of the legislation is a disincentive to inventiveness, and stifles new businesses and job growth by threatening the financial rewards available to innovators in U.S. industry. Passage of the current patent reform bill language would only serve to relax the very laws designed to protect American innovators and prevent infringement of their ideas."<ref name=ieee>{{Cite web |url=http://ieeeusa.org/policy/POLICY/2007/082707.pdf |title=Meredith and Grzelak: "Letter to House and Senate Leaders and Judiciary Committee Members Opposing Adoption of the Patent Reform Act of 2007 (S. 1145/H.R. 1908)". The Institute of Electrical and Electronics Engineers, Inc. – United States of America, 27 August 2007 |access-date=21 September 2013 |archive-url=https://web.archive.org/web/20130925094247/http://ieeeusa.org/policy/POLICY/2007/082707.pdf |archive-date=25 September 2013 |url-status=dead }}</ref>

Proponents argue that the FITF aligns the U.S. with the rest of the world, encourages early disclosure, and brings more certainty, simplicity, and economy to the patent process, all of which allow greater patent participation by startups.<ref>{{cite web|last=Koenig|first=John|title=America Invents Act is Better for Small Business|url=http://johnkoenig.com/the-america-invents-act-is-better-for-small-business/|access-date=21 September 2011}}</ref>

== See also ==

* [[ListGlossary of patent legallaw conceptsterms]]

* [[Submarine patent]]

* [[Inventor's notebook]]

== References ==

{{Reflist|30em}}

* [http://www.torys.com/Publications/Documents/Publication%20PDFs/ARTech-19T.pdf From First-to-Invent to First-to-File: The Canadian Experience], Robin Coster, American Intellectual Property Law Association, April 2002.

== External links ==

* [http://www.oblon.com/Pub/GholzFirsttoFile.html First-to-file or First-to-invent?], Charles L. Gholz, ''Journal of the Patent and Trademark Office Society'', 82 JPTOS 891, December 2000.

* [https://web.archive.org/web/20110410014904/http://www.torys.com/Publications/Documents/Publication%20PDFs/ARTech-19T.pdf From First-to-Invent to First-to-File: The Canadian Experience], Robin Coster, American Intellectual Property Law Association, April 2002.

* [http://www.inventions.org/resources/advisory/first.html First to Invent vs. First to File], Inventors Assistance League. Advocates first-to-invent.

* [https://web.archive.org/web/20050207102744/http://www.oblon.com/Pub/GholzFirsttoFile.html First-to-file or First-to-invent?], Charles L. Gholz, ''Journal of the Patent and Trademark Office Society'', 82 JPTOS 891, December 2000. Advocates first-to-file for the US.

* [http://www.inventions.org/resources/advisory/first.html First to Invent vs. First to File] {{Webarchive|url=https://web.archive.org/web/20060708053224/http://inventions.org/resources/advisory/first.html |date=2006-07-08 }}, [[Inventors Assistance League]]. Advocates first-to-invent.

* [http://www.inventionconvention.com/inventorsvoice/report/ 1992 Special Summary Report; The Great Debate; First-to-invent vs. First-to-file and the International Harmonization Treaty], Stephen Gnass/Inventors Voice. Advocates first-to-invent as more friendly to the individual inventor.

[[Category:Patent law]]

[[ja:先発明主義]]

[[ro:Primul care a înregistrat şi primul care a inventat]]