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Commercial Litigation Woods Lonergan LLP

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PATENT - Fears About Changing from “First to Invent” vs. “First to File” misplaced

Date: 
July 12, 2010

The United State patent system is currently a “first to invent” system while most other countries operate under a “first to file” system

Currently, there’s a bill before the Senate, the Patent Reform Act, that would change us to a “first to file” system.

The difference between these two systems is highlighted when two or more inventors invent the same invention - or at least inventions that would infringe on each other’s patents - at roughly the same time. In a “first to file” system, whomever files the first patent application has priority rights to the invention. By contrast, in a “first to invent” system, the first inventor has priority rights to the invention and he does not have to rush to file a patent.

This has the real potential to create a race to the patent office with applications for patents on inventions that are underdeveloped and incomplete. This, in turn, could then potentially burden our already over-burdened patent examiners with more work that does not lead to any more new or useful inventions but rather ultimately leads to more rejections of patent applications.

An abstract idea is not patentable and never has been. Because of that, the beginning stage of an invention - the conception stage - is not enough to get a patent. In order to receive a patent, there must be conception AND development of this conception into a useful product (or method), for which the term of art is “reduction to practice.”

Confusingly, one of the ways of reducing an invention to practice is by filing a patent application. Thus, there is nothing stopping the filing of an underdeveloped patent application immediately upon conception.

The current system, however, provides two incentives for not doing this and for undergoing more development:

  1. an underdeveloped application will not be granted as a patent, and
  2. the“first to invent” system provides the inventor with the security of knowing that, as long as he can prove the conception and when it occurred, he can win in an interference proceeding even if he doesn’t immediately file.

A shift to a “first to file” system would remove this second incentive.

But that should not be a problem. The fact that conceptions are not entitled to patents should be enough, on its own, to deter these underdeveloped applications. Presumably, the reason it is not enough is because inventors are naturally overly optimistic that they will be able explain and argue why their invention is entitled to a patent and is not simply a conception or idea. So the problem is really that there is no penalty for having that attitude.

While it costs money to file a patent application this small price is not enough to deter many people (and certainly not enough to deter companies) from filing even when they are 99% certain that the patent will not be granted.

This problem is not one that exists within the context of the “first to invent” or “first to file” system but rather it is a problem with the procedure for filing an application. Whether or not there is a solution is unclear. Raising the application fee is one possibility. Another possibility might be instituting an additional “waste of the PTO’s time” fee/fine that must be paid in the event that an application is rejected because it is not specific or developed enough. A third possibility would be to put more of an emphasis on filing provisional applications, which might currently be underutilized and, whose purpose is to deal with this exact problem.

But the bottom line is that in the world of intellectual property, and specifically patents - where the name of the game is giving incentives for inventors to create useful things - it seems that the “first to invent” system puts a huge premium on coming up with the idea for invention but not on the development of that concept to an actual useful invention. It may be a better approach to keep inventors under the pressure and threat of competition all the way through the end of the inventing process.

This is not necessarily an argument to say that the shift to a “first-to-file” system would be a good thing although there are definitely arguments in favor of it that have merit. In addition to keeping pressure on inventors to move with haste all the way through the inventing process, it would harmonize the U.S. patent system with the rest of the world, and it would remove the need for Patent Office interference proceedings, which, though infrequent, are fraught with uncertainty.

This argument is merely to suggest that if the fear of a race to the patent office with undeveloped applications is the only obstacle, perhaps that fear may be misplaced and irrelevant.

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Woods & Lonergan, does not intend to create an attorney-client relationship by offering this information, and anyone's review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have legal matter requiring attention. © Adam Steinmetz and Woods & Lonergan.

Adam Steinmetz is currently a Columbia Law Student and is a graduate of The Cooper Union with a degree in chemical engineering. He has already been admitted to the US Patent Bar. He can be reached at: Adam.Steinmetz@law.columbia.edu.