First to file and first to invent
From Wikipedia, the free encyclopedia
First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first to file system is used in the majority of countries, with the notable exception of the United States, which operates a first to invent system.
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[edit] First to file
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.
[edit] First to invent
The United States uses a first-to-invent system, unlike most other countries in the world. Invention in the U.S. is generally defined to comprise two steps: (1) conception of the invention and (2) reduction to practice of the invention. When an inventor conceives of an invention and diligently reduces the invention to practice (by filing a patent application, by practicing the invention, etc), the inventor's date of invention will be the date of conception. Thus, provided an inventor is diligent in reducing an application to practice, he or she will be the first inventor and the inventor entitled to a patent, even if another files a patent application (reduces the invention to practice) before the inventor.[1]
However, the first applicant to file has the prima facie right to the grant of a patent. Should a second patent application be filed for the same invention, the second applicant can institute interference proceedings to determine who was the first inventor (as discussed in the preceding paragraph) and thereby who is entitled to the grant of a patent. This can be an expensive and time-consuming process.
[edit] Example
Assume Tom conceives of a new mousetrap on January 1, 2006. Tom works diligently from January 1, 2006, to February 1, 2006, to prepare a patent application, and Tom files his patent application on February 1, 2006. Thus, Tom reduced his invention to practice on February 1, 2006.
Assume Jerry conceives of the same mousetrap on January 10, 2006, and diligently files a patent application on the new mousetrap on January 20, 2006.
Who is entitled to the patent on the mousetrap? Tom is, because he conceived of the mousetrap before Jerry and worked diligently to reduce it to practice.[2]. The USPTO would institute an interference proceeding between Tom and Jerry to review evidence of conception and diligence.
As a further extension of this example, assume Tweedy conceived of the same mousetrap on December 31, 1990. Tweedy never told anyone about the mousetrap and did not work on reducing the mousetrap to practice for many years due to financial reasons. Tweedy finally reduces the mousetrap to practice on February 15, 2006. Is Tweedy entitled to the patent because he conceived of the mousetrap before Tom and Jerry? No, Tweedy did not diligently work to reduce the invention to practice, so he is not entitled to a patent over Tom or Jerry. [3] This is one of many reasons why patent attorneys advise clients to file patent applications as soon as possible.
[edit] Comparison
The debate as to which system is better is long-running and unlikely to reach a single conclusion. There are arguments for and against both systems.
The first to file system leads to procedural certainty as the filing date of an application can very rarely be challenged. In contrast, the first to invent system leads to uncertainty as the right to grant of a patent can be challenged by a second party and can only be finally determined by extensive consideration of the making of the invention.
It is said, however, that the first to file system favours large companies who can afford to rapidly file patent applications, thereby gaining an advantage over smaller companies who are slower to file due to cost restraints. The first to invent system is therefore said to be beneficial in encouraging the growth of smaller companies. A potential problem with this argument is that a smaller company, filing second, would have to rely on interference proceedings to claim their patent, which may be beyond their economic reach and they are therefore no better off.
[edit] References
- From First-to-Invent to First-to-File: The Canadian Experience, Robin Coster, American Intellectual Property Law Association, April 2002.
- First-to-file or First-to-invent?, Charles L. Gholz, Journal of the Patent and Trademark Office Society, 82 JPTOS 891, December 2000.
- First to Invent vs. First to File, Inventors Assistance League. Advocates first-to-invent.
- 1992 Special Summary Report; The Great Debate; First-to-invent vs. First-to-file and the International Harmonization Treaty, Stephen Gnass/Inventors Voice. Advocates first-to-invent as more friendly to the individual inventor.
