First to file and first to invent: Difference between revisions

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{{Short description|Concepts in patent law}}

'''First to file''' (FTF) and '''first to invent''' (FTI) 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 all countries,<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=June 11, 2011 |accessdate=July 31, 2013}}</ref> including the United States, which switched to a '''first-inventor-to-file''' (FITF) system on March 16, 2013 after the enactment of the [[America Invents Act]].<ref name=aiaeffective>[http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf USPTO: "America Invents Act: Effective Dates"]</ref> There is an important difference between the strict nature of the FTF under the [[European Patent Office|European Patent Office (EPO)]] and the FITF system of the [[United States Patent and Trademark Office|United States Patent and Trademark Office (USPTO)]]. The USPTO FITF system<ref name=usptopressrel>[http://www.patentdocs.org/2013/02/uspto-issues-first-inventor-to-file-examination-guidelines-and-final-rule.html Zuhn: "USPTO Issues First-Inventor-to-File Examination Guidelines and Final Rule"]</ref> affords early disclosers some "grace" time before they need to file a patent,<ref name=kravets/> whereas the EPO does not recognise any grace period, so early disclosure under the FITF provisions is an absolute bar to later EPO patent.

{{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]]. 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 inventdisclose ==

Canada, the Philippines, and the United States had been among the only countries to use ''first-to-invent'' systems, but each switched to first-to-file in 1989, 1998, and 2013 respectively. 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>[httphttps://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''Report FROMfrom THEthe EUROPEANEuropean COMMISSIONCommission TOto THEThe EUROPEANEuropean PARLIAMENTParliament ANDand EUROPEANEuropean COUNCILCouncil'' "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 the 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 ==

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]</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.

=== Example ===

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.

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.

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.

However, if Tweety has published his idea before 2006, then this publication can be a basis to reject or invalidate Tom or Jerry's patent.{{fact|date=January 2016}}

== 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>[httphttps://papers.ssrn.com/sol3/papers.cfm?abstract_idabstract=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>

== The USA'sUS 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>

President Obama signed the [[America Invents Act]] of 2011 on September 16, 2011.<ref>[http://www.whitehouse.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> The law switched U.S. right to the patent from the previous "first-to-invent" system to a "first-inventor-to-file" system for patent applications filed on or after March 16, 2013.<ref name=aiaeffective/> 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’sAct's Proposed First-To-File Standard: Needed Reform or Constitutional Blunder?", in THE''The JOHNJohn MARSHALLMarshall REVIEWReview OFof INTELLECTUALIntellectual PROPERTYProperty LAWLaw'', 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"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: "“LetterLetter 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>

Under the first-to-invent system, when two people claim the same invention, the USPTO would institute an interference proceeding between them to review evidence of conception, reduction to practice and diligence.

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>

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>[http://ieeeusa.org/policy/POLICY/2007/082707.pdf 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]</ref>

== See also ==

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== References ==

{{Reflist|30em}}

== External links ==

* [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.

* [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.