Understanding the New First-to-File Patent System

If you’re an entrepreneur who invents (or plans to invent) new processes, designs and products for your business, filing a patent with the U.S. Patent and Trademark Office may be essential to protecting your future.

In 2011, Congress passed a large piece of legislation called the America Invents Act. At its core, it’s a patent-reform law that includes a new first-to-file system for patents filed during or after March 2013.

What are the implications of this law, and how might it affect you and your inventions? Below is an examination of the new first-to-file patent system.

What’s changed?

The most important difference between the old law and the new one is that patents will be granted based on whoever files the application first (this is called a “first-to-file system”). Previously, the Patent Office provided you with a patent if you could prove you invented the product first. This is no longer the case.

What’s the difference?

Here’s one way to look at it:

Let’s say, in a stroke of genius, you come up with a new way to build widgets. It’s June 1, and you’re full of enthusiasm about your idea. You work on it tirelessly all summer, and finally, on September 30, you feel it’s solid enough to submit for a patent.

Now, let’s say your neighbor down the street got the same idea on July 1 and filed a patent for it on September 27. Under the old law, you would be entitled to the patent because you had invented it earlier, even though you filed your patent request later. Under the new provision, your neighbor would be granted the patent.

Is that fair?

Some detractors of the legislation have stated that this first-to-file system might offer an unfair advantage to larger companies that have the funds and manpower to file patent requests more quickly and frequently, while smaller businesses do not. While this can be a concern, it was also a concern with the first-to-invent law, as larger companies have the money to countersue and to hire excellent lawyers should an inventor file suit against them.

There is a way around it.

Unlike other countries that have implemented first-to-file procedures, the United States still offers a grace period of one year under certain provisions. If you publicly disclose (prior publication) the idea for your invention, you have one year from that disclosure date to file for a patent. So if you post about the invention on your blog, for example, that evidence can be used to stop the granting of a patent to someone trying to register the same invention.

Technically, disclosing the idea on your blog or website may leave room for another patent applicant to file for derivation proceedings. In this instance, the second patent applicant would claim that you had created your invention based on information derived from the second applicant. However, this requires quite a bit of corroborating evidence, and it is not considered easy to win.

The new law also allows for a more international definition of the term “prior art” (or prior publication). Previously, the USPTO didn’t take into account products invented outside U.S. borders unless there was also documentation. Now, the existence of an invention anywhere in the world will be taken into consideration when examining patent requests and challenges.

Why file first?

Under the new law, and even with the above provisions in place, it is best to simply file first. Relying on prior publication or derivation proceedings to secure your patent is a dangerous gamble.

For most patent application filings, you will need a strong understanding of what your invention does and how it is different than other inventions on the market. You’ll also need drawings of your invention (if applicable), but won’t typically need a prototype. So take the time upfront to flesh out your idea and submit your patent quickly, especially if you have reason to believe others may be developing something similar – you can worry about the details later.