On the occasion of the U.S.’s upcoming switch to the first-to-file patent system

On March 16th, 2013 the U.S. will be joining the ranks of the majority of countries by switching from the first-to-invent to the first-to-file patent system.  The change is part of a broader set of patent system reforms comprising the Leahy-Smith America Invents Act that was signed into law in 2011.

Under the outgoing first-to-invent system, patent protection is awarded to the party that first conceives of the invention and reduces it to practice (by filing a patent application or building a working prototype).  If one party (Inventor A) comes up with an invention but a second party (Inventor B) reduces it to practice before Inventor A does so, then Inventor A is still awarded the patent so long as reasonable diligence is exercised in reducing the invention to practice up to the date when Inventor B achieves reduction.

Under the new first-to-file system, patent rights are awarded to the party that is first to file a patent application.  In our earlier example, if Inventor B files a patent application for an invention that was earlier conceived of by Inventor A, then Inventor B will get the patent.

The first-to-file system reflects the bargain that the patent system is intended to strike by requiring public disclosure through the filing of a patent application in exchange for granting exclusive monopoly rights over the invention.  In contrast, under the first-to-invent system, it is possible for an inventor to develop an invention and sit on it until someone else comes along and files a patent application, and then come forward and receive patent rights based on the prior invention date.

All this is by way of saying, inventors get ready to start your engines and join the rest of the world in the race to the patent office.  U.S., welcome to the first-to-file system… What took you so long?

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