new patent rules: first inventor to file


Who is jumping/inventing first?!

On March 16, 2013, the United States is moving to the first-inventor-to-file patent system, which means patent priority is awarded to the first inventor who files a patent application. If you’re wondering what the US was using before this, it was the first-to-invent system, which awarded the patent to the applicant who conceived the invention first.  Most other countries use the first-inventor-to-file system and people happy with this change believe it will make the patent process smoother and provide a better guide for the examining officers because this removes the burden of the Patent Office to determine who invented the item first.

To patent something in the US, the invention needs to be “novel”.  The new requirements focus on whether documents or activities existed before the effective filing date of the invention:

1. The invention was patented, described in a printed publication, on sale, publicly used, otherwise available to the public before the filing date.

2. The invention was described and published (per the appropriate guidelines) effectively filed before the effective filing date.

Because of the above evidence of prior art, claims may be subject to rejection.

Smaller businesses and inventors worry that this would create a “race to the patent office” to protect their ideas as soon as possible and because smaller businesses cannot compete with larger businesses in paying for filings, it creates an obvious inequality.

There is a one year grace period to provide an inventor, who publishes his invention or shows it at a conference (i.e. making it publicly available) an “absolute right to priority if he files an application within one year of his disclosure”.  This grace period allows some protection to the inventor so as to be considered prior art against another patent application, and no subsequent work can defeat the invention.  In any case, filing as soon as possible is key.

As with all new laws, we have to see how this will work over time and whether it will develop into a useful and efficient process.  Look at the USPTO website for additional videos and training materials.


the legal boutique patents new patent rules Leahy-Smith American Invents Act (AIA)