America Invents Act: First to File

1/21/2013

The U.S. changes to a first-to-file patent system from a first-to-invent system as part of the America Invents Act of 2011.

“Although the new system may produce some differing results, in general I look for it to be beneficial for the patent system as a whole,” Brandon said. “It will be much easier for the public to look at a patent and know if it is really valid and enforceable.”

The U.S. has been under a first-to-invent system since the first Patent Act in 1790. Under that system, when two patent applicants each sought a patent on the same invention, in theory a U.S. patent was awarded to the first applicant to have made the invention.

Starting with new applications filed on or after March 16, a patent is to be awarded to the inventor that first files a patent application on a given invention. Thus, in general, an earlier-filed patent application will be “prior art” to later-filed applications – meaning that later-filed applications will have to distinguish over the earlier-filed application.

Under the old system, the U.S. Patent Office would examine an application and then grant a patent, while lurking in the background were potential prior art with unknown effective dates and non-public prior art that the patentee and others would only learn about in later litigation, he said.

While the new system is not perfect, the public should be able to do a better job of searching public databases to find the prior art relating to an invention, and then know with more certainty whether a patent is valid or whether to file a patent application in the first place.

“In theory, this should help businesses and investors know better when to commit to developing an invention, and hopefully engender greater respect for issued patents,” Brandon said.

For a more detailed analysis by Richard Brandon click here.

Story adapted from Greta Guest’s article in the University Record.