First to file and first to invent: Difference between revisions

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Revision as of 00:10, 6 February 2008

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== 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 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 (reduces 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. This can be an expensive and time-consuming process.

=== 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 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. Tom is entitled to the patent on the mousetrap, because he conceived of the mousetrap before Jerry and worked diligently to reduce it 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>. The USPTO would institute an interference proceeding between Tom and Jerry to review evidence of conception and diligence.

As a further extension of this example, assume Tweedy conceived of the same mousetrap on December 31, 1990. Tweedy never told anyone about the mousetrap and did not work on reducing the mousetrap to practice for many years due to financial reasons. Tweedy finally reduces the mousetrap to practice on February 15, 2006. Tweedy did not diligently work to reduce the invention to practice, so he is not entitled to a patent over Tom or Jerry.<ref>[http://www.uspto.gov/web/offices/pac/mpep/documents/0700_715_07_a.htm#sect715.07a 715.07(a) Diligence - 700 Examination of Applications<!-- Bot generated title -->]</ref> This is one of many reasons why patent attorneys advise clients to file patent applications as soon as possible.

== See also ==