The Evolution of US Patent Law from First to Invent to First Filer System

The United States has seen significant changes in its patent laws over the years. One of the most notable changes was the transition from a first-to-invent system to a first-to-file system. This shift, which occurred in 1999, has had far-reaching implications for inventors, businesses, and the patent system as a whole.

Why the Move Away from First to Invent?

Primarily, the move to a first-to-file system was to harmonize the US patent system with the rest of the world. As part of its efforts to strengthen its intellectual property (IP) rights and align with international standards, the US Patent and Trademark Office (USPTO) made this significant change. This transition aimed to provide a more predictable and streamlined process for inventors and patent applicants.

A first-to-file system eliminates costly “interferences,” which are legal disputes that occur under the first-to-invent system when two inventors claim to have invented the same item. This change also eliminated the ability to “swear behind” prior art that was published under a one-year grace period, making the process more efficient and transparent. Inventors are now required to disclose their inventions as soon as possible to avoid the risk of loss due to potential prior disclosures.

A Humorous Example: Patenting “File Open”

Let's delve into a more humorous and practical example of why the shift was essential. In the corporate world, marketing is often more inventive than inventing. A fictional scenario from a company's experience perfectly illustrates the challenges and potential pitfalls of implementing a first-to-file system.

One company, working under the first-to-invent system, had a contract with another company (let's call it Company A) to resell a widget with a different paint color. Company B's management wanted to strengthen their intellectual property (IP) rights. Marketing, being the most imaginative team, proposed patenting the concept of “File Open.”

When the lab (where the narrator belongs) pointed out that “File Open” was already in use and unable to be patented, marketing vehemently disagreed. They argued that they could be the first to file and therefore claim the patent. The conversation went something like this:

Marketing: ‘We are going to patent the concept of ‘File Open’. We will own the patent and Company A will have to pay us royalties.’

Lab: ‘In addition to being first to file, you have to actually invent it.’

Marketing: ‘Who’s to say we didn’t invent it?’

Lab: ‘Company A will say they invented it since they developed the widget before you.’

The corporate patent lawyer, who was fresh out of law school, agreed with marketing's proposal because his role was to write patent applications, not to validate their inventiveness. This situation highlights the importance of clear early disclosure to avoid patent fraud, which is a serious federal crime.

The Importance of Early Disclosure

A significant takeaway from this story is the importance of early disclosure. In the case where Company B received samples from Company A, they could have avoided the patent fraud by disclosing the samples earlier. This case also underscores the need for inventors and businesses to maintain meticulous records and to be aware of their obligations under the new system.

Conclusion

The move from a first-to-invent system to a first-to-file system in the US was driven by the desire to align with international standards and to streamline the patent process. While the change was implemented with the best intentions, it did create potential pitfalls for companies and inventors who were not fully prepared. This shift highlighted the importance of early disclosure and rigorous documentation in the patent application process.

Understanding the nuances of these changes can help businesses and inventors navigate the complex landscape of intellectual property and avoid costly mistakes, such as attempting to patent ideas that are already in public use or infringing on existing patents.