April 15, 2014

Five Tips for Dealing with “First Inventor to File”

It’s here.

Thanks to the America Invents Act (AIA), as of March 16, 2013, the U.S. patent system became a “first inventor to file” system.  That is, the inventor who files first will get a patent, even if the inventor who first conceived the idea files at a later date.  This is very different from the old system, which was a “first to invent” system that awarded patents to the first inventor, even if that inventor was not the first to file.

The new system obviously puts a premium on timely action.  The days of lengthy product testing to flesh out and perfect an invention may be gone forever.  The system no longer accommodates those who linger.  It rewards those who can move quickly.

Here are some suggestions for being ready to move quickly and exploit “FITF.”

  • File early. By all means, don’t rush down to the Patent Office with an incomplete application or a half-baked idea, but do file as soon as you have a complete conception of your invention.  You want to file before another inventor, who invented independently, files an application.  You don’t want to be in the position of having to challenge an earlier filer in a derivation proceeding by arguing that the earlier filer derived the invention from you.[1]  The AIA also expanded the definitions of prior art, and prior art does not need to be more than a year old before it can be asserted against an application.
  • Consider Filing Provisional Patent Applications After Conception Of An Invention. Filing a provisional application gets you an early filing date, and a later-filed “regular,” or nonprovisional, patent application can claim the benefit of that earlier filing date.  This improves your chances of being the first inventor to file.  Moreover, the earlier filing date reduces the scope of potential prior art that can be cited against your application or that can be used to invalidate your patent after it issues.  This can become critical in view of the expanded definitions of prior art under the AIA.
  • Keep good written/electronic records of potentially patentable technological developments. Just because the system rewards the first inventor to file, don’t throw away your lab notebooks thinking that when you made the invention no longer matters.  You may need to invoke a derivation proceeding if someone else files first.  It’s not too far-fetched to anticipate that a disgruntled employee or a business rival will learn enough about the invention to file their own application before yours.  Good records of your work may save the day.
  • Review and evaluate work frequently. Conduct brainstorming sessions and invention workshops frequently.  Make sure employees are keeping good written/electronic records of their potentially patentable work, and that someone is charged with collecting and reviewing the records for ideas and developments that may be valuable to your business.  Regularly collecting work records and reviewing them with management can reduce the amount of time that it takes to determine which developments are worth patenting.  Eliminate internal barriers that increase the amount of time it takes to authorize your patent attorney to prepare a patent application.
  • Think defensively. If you decide that a development isn’t worth patenting, consider publishing it anyway as a defense against a competitor filing an application for the same technology.  The publication will be prior art against applications filed by others if the publication pre-dates the filing date of those other applications, and may prevent others from obtaining patents on the same or a similar invention.

The “first inventor to file” system is a brand new concept in U.S. patent law, and will no doubt evolve as inventors, the Patent Office, and the courts use it and interpret it.  But, knowing the advantages and pitfalls of the AIA and being ready to move quickly on potentially patentable ideas will give your company the edge.

[1] Under the former “first to invent” system, interference proceedings would determine which of two competing applicants was first to invent, and therefore entitled to the patent.  “First inventor to file” eliminates interferences, but adds derivation proceedings to resolve disputes that may arise where a later applicant alleges that a prior applicant derived the invention (i.e., is really not the first inventor) from the later applicant.

©2014 Drinker Biddle & Reath LLP. All Rights Reserved

About the Author

Gregory J. Lavorgna, Partner, Drinker Biddle Reath

Gregory J. Lavorgna is a partner of the firm, with 30 years' experience in intellectual property law. Greg litigates intellectual property disputes, and assists clients in protecting, enforcing, and capitalizing on their intellectual property assets, and advises clients on issues of patentability, patent infringement and patent validity; trademark availability, registrability and infringement; copyright registration and infringement; trade secret protection and employee agreements; and licensing


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