First to file and first to invent: Difference between revisions

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Revision as of 17:56, 16 September 2006

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== First to invent ==

The United States uses a ''first-to-invent'' system, unlike most other countries in the world. Invention is the U.S. 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 <i>diligently</i> 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</ref>

In a first to invent system, the right to the grant of a patent for a given invention lies with the first person to make that invention (with certain exceptions defined by the applicable law). The USA is the only significant country utilizing a first to invent system.

The detailed implementation of such a system is complicatedHowever, since the datefirst of invention must be provenapplicant to substantiatefile a right to a patent. Under US law,has the first to file ''<i>prima facie'' has the</i> right to the grant of a patent. Should a second patent application be filed for the same invention, the second applicant for that patent 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.

In an imaginary world, two inventors are secretly working on the greatest sure-kill [[mousetrap]]. [[Tom and Jerry (MGM)|Tom]], the diligent first inventor, invented it. But he did not file the patent application. He wanted to improve it so it could be mass produced by [[Acme Corporation|ACME]].

Jerry, working independently from Tom, developed the same invention shortly after Tom's success. Jerry had no use for the invention, but he wanted to bar anyone else from obtaining a patent on it. He hired his [[Speedy Gonzales|fast running cousin]] to deliver the patent application and became the first to file an application.

Assume Jerry conceives of the <b>same</b> mousetrap on January 10, 2006, and diligently files a patent application on the new mousetrap on January 20, 2006.

Both of them kept the invention as a [[trade secret]] up to this point.

Who is entitled to the patent on the mousetrap? Tom is, 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</ref>. The USPTO would institute an interference proceeding between Tom and Jerry to review evidence of conception and diligence.

If Tom notices Jerry's move in time, he may prevail in an [[interference proceeding]] filed in the USPTO. If Tom disclosed the invention to the public before Jerry's filing, he can claim [[prior art]] and use it to invalidate Jerry's patent (Tom would have, at this point, a year to file a patent application. If he failed to file within this one-year [[novelty (patent)|grace period]], the invention would enter [[public ___domain]]). If he fails to notice Jerry's move before the above-mentioned deadline, he can do nearly nothing to Jerry. If he uses the invention secretly himself, he is not allowed to raise so-called "prior use right" as a [[defense (legal)|legal defense]] in a [[patent infringement]] lawsuit because the subject matter is not a [[business method patent]]. He can try to negotiate a [[license]] from Jerry or catch the mouse in another way not covered by Jerry's patent.

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. Is Tweedy entitled to the patent because he conceived of the mousetrap before Tom and Jerry? No, 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</ref> This is one of many reasons why patent attorneys advice clients to file patent applications as soon as possible.

It is usually hopeless for a [[copycat]] to [[forgery|forge]] evidence of first invention to hijack an issued patent or publicized patent application.

== Comparison ==