On March 16, 2013 the U.S. joined the rest of the world and transitioned from a first-to-invent patent system to a first-to-file system. If you wanted your patent application examined under the old first-to-invent rules, the deadline to submit your patent application was March 15, 2013. Because of the rule change, a huge influx of patent applications came in on that day, 13,888 to be exact. This number is second only to another last minute filing day, June 7, 1995, the day before the last major U.S. patent law change. Going forward, all new patent applications will be examined under the international standard first-to-file system. So what does it all mean, first-to-file versus first-to-invent? And why the mad rush to the Patent Office?
Under the old first-to-invent system, an inventor could have been the first to invent something and been beaten to the patent office by another who filed a patent application on the identical invention, but still be awarded the patent. This old system favored fairness because it granted the patent to the true, first inventor. But it also led to disputes at the U.S. Patent Office regarding who was the actual first inventor. The Patent Office used a procedure called an Interference Proceeding to determine the first inventor. An inventor could “swear behind” prior art references cited against him if he could prove that he had invented before the priority dates of the other inventors. These proceedings were costly and consumed a lot of the resources within the Patent Office. The first-to-invent system was also different from how most other countries determined who should receive a patent.
The new first-to-file system now lines up with what the rest of the world is doing, but while doing so, it sacrifices a measure of fairness in favor of efficiency. Under the new rules of first-to-file, the original inventor can invent something, but if he waits too long to file a patent application, he can be scooped by a rival inventor who files a patent application before him at the Patent Office. The system might not seem very American, but it should instill increased predictability in the process.
Patent attorneys rushed to file patent applications on March 15th so that their inventor clients would be entitled to swear behind prior art and prove that they were the true, first inventor. Patent applications received after March 15th are now reviewed under the new America Invents Act which established the first-to-file system. There are now only limited opportunities for an inventor to swear behind prior art so it is extremely important to timely file all patent applications to establish as early a priority date with the Patent Office as possible.
If you have an invention and would like to explore patent options, please contact the patent attorneys at Clegg Law. Our experienced patent attorneys can help you evaluate your options and assist in creating a patent strategy that will maximize your chances of receiving a strong patent to protect your valuable intellectual property.