The United States is the only country in the world to still use a first-to-invent system for patent application filing; every other country employs a first-to-file system. That will soon be changing.
Under the current U.S. first-to-invent system, the first person to create an invention is entitled to a patent on that invention, even if the inventor files a patent application on that invention after someone else has filed a patent application on the same invention. By contrast, in a first-to-file system, the right to the grant of a patent for a given invention lies with the first person to file a patent application for protection of that invention, regardless of the date of actual invention. Therefore, the issue of prior invention is irrelevant.
On March 16, 2013, the first-to-file provisions of the Leahy-Smith America Invents Act (“AIA”) go into effect, replacing the current first-to-invent system. Although the new rules definitely change the American patent system, they do not necessarily bring the United States precisely into conformance with the first-to-file patent system used in other countries.
The provisions of the AIA establish what some, including current USPTO Director David Kappos, have called a “first-inventor-to-file” system because they protect inventors from misappropriation of an invention by others who merely learn of an invention and file a patent application before the actual inventor can do so. Specifically, the new U.S. rules establish a system where the first inventor to file is entitled to the patent unless it can be proved that the first inventor “derived” the invention from another.
In such a case, an inventor who believes that the content of an earlier-filed patent application was derived from his or her invention may initiate a process in the Patent Office called a “derivation proceeding” to determine who was the true inventor of the invention. An inventor who believes someone has misappropriated his or her invention must start the derivation proceeding within one (1) year of the date of the first publication of a claim to an invention that he or she believes is the same (or substantially the same) as what he or she invented.
Although the filing provisions under the AIA retain some of the protections for inventors’ rights inherent to the first-to-invent system, they nonetheless increase risk of loss of patent rights in cases where the true first inventor cannot prove prior invention or is unaware that another person filed an earlier patent application on the same invention until after expiration of the one-year period for filing a derivation proceeding.
In light of the new filing provisions, all inventors should review and evaluate their filing strategy and determine whether new procedures or additional resources are needed to enable more prompt patent application filings.