1. First to File: What is it?
2. Why is the (Patent) First to File Important?
3. Reasons to Consider Using the (Patent) First to File System
4. Common Mistakes
5. Frequently Asked Questions

First to File: What is it?

The first to file rule states that whoever is the first to file a patent on an invention owns the rights to that invention, even if it is a provisional patent or if that person didn't come up with the idea. After the America Invents Act went into effect in March 2013, the United States switched from a "first to invent" to a "first to file" rule.

Until 2013, the U.S. Patent Law used the "first to invent" rule to protect inventors. This meant that if the patent application listed two or more inventors for the same invention, the patent would be awarded to the inventor who first thought of the idea and put the invention into practice. This was the case even if the first inventor wasn't the "first to file" a patent application.

While this new law doesn't technically award a patent to someone who steals an invention, it does mean that a victim of idea-theft would have a harder time getting his or her rights back if a thief filed first. This "first to file" patent system affects every U.S. patent filed on or after March 16, 2013.

There is an additional rule that can often help inventors. It allows you a one year grace period to file a patent if you have shown your creation at a convention or conference. This means that no one else can put a patent on your invention. After you have unveiled it, you'll have a full year of protection.

Why is the (Patent) First to File Important?

There are some benefits to a "first to file" patent system. For instance, it's now easier to determine who is entitled to a patent since ownership is solely determined by the date of filing. There's also more certainty for the invested patent owner or investors in the patent. This level of certainty can make it easier to raise the funds needed to file a full patent application.

This "first to file" system also awards diligence. Applications who file early get rewarded with patent rights against other inventors who procrastinate. As such, filing for a patent in a timely manner is more pressing than ever.

If you're worried about becoming the "first to file" in this new system, here are some strategies to consider when seeking patent protection:

  • Efficient Patent Management – you will need an efficient patent management strategy for yourself or your company that encourages early disclosure of new inventions. If you oversee a company and its inventions, you'll also want to employ a patent manager who reviews all invention submissions. Review them quickly and make an early decision.
  • Know How You'll File – hiring a patent lawyer right away can ensure your application is filled out and submitted quickly. You can also self-draft the provisional patent application right away; just be sure to do your research.
  • Don't Wait to File the Non-Provisional Application – a provisional patent application (PPA) is a smart move because it gives your invention the "Patent Pending" status and protects it for one year. However, the patent application process isn't complete without filing the non-provisional application within that year.

Reasons to Consider Using the (Patent) First to File System

First of all, you have to use the first-to-file system. It's the law, and you have no other choice. Not filing at least your provisional patent application immediately could put you at risk of losing your invention, especially if other people are aware of the invention. In the United States, you can only file for a patent if the invention is new and not obvious. This means that not just anyone can think of the idea.

A first-to-file system like that in the U.S. simply boils down to whoever files first gets the patent, period. The downside is that the grace period between filing a PPA and the actual patent application is so small (one year) that it makes it hard for individual inventors to come up with the money necessary to pay for the non-provisional patent application. You can still use the grace period to raise the funds, but if the PPA expires before you can submit the official patent application, someone else can patent a similar idea.

Switching to a first-to-file patent system also changed how to reject a patent, which is also known as "prior art." Prior art includes any printed publications describing the invention, patents, sales, or public uses. If this prior art was available before the earliest PPA filing date, the patent might be rejected.

Common Mistakes

There are some downsides to the first-to-file system. For inventors used to the old rule, mistakes are easily made.

The legal changes require patent maintenance and validity challenges to be reconsidered. There are now new ways to challenge a patent's validity, including pre-issuance meetings or post-grant reviews. You will need to tread carefully so that you don't leave yourself open to challenges.

There is also a new procedure for challenging patents called the Post-Grant Review. This means that any third party can challenge the patent for up to nine months after the date the patent was issued.

For the most part, though, small inventors shouldn't even be affected by the legal changes. Just be sure that you fill out your patent applications in full detail and hire a patent lawyer to help if you're in over your head.

Frequently Asked Questions

  • What is the first-to-file system?

The first-to-file system gives patent rights to the first person to file the patent application. This may or may not be the inventor.

  • Why did the law change from "first to invent" to "first to file?"

The first-to-file system was enacted as part of a larger 2011 patent reform called the America Invents Act. The first-to-file system is used by every other country in the world, and it took effect in the U.S. on March 18, 2013.

  • What does "first to file" mean for inventors?

Prior to the America Invents Act, the Patent Office awarded a patent to whoever invented the idea first. Now, that patent goes to whoever filed the application first.

  • Isn't the first-to-file system unfair?

In theory, the older system was more fair because you could start an interference proceeding if someone stole and patented your idea. In reality, those proceedings were rare, so few benefited from the old law.

  • I'm a small inventor. How will first-to-file affect me?

A major criticism of the first-to-file system is that it favors major corporations like Google and Apple who have the funds to retain lawyers and hire employees to invent products for them. The good news is that "first to file" doesn't really affect small time inventors.

  • How can I be sure that my invention won't be stolen?

File your provisional patent application as early as possible. Shelling out the money for the non-provisional patent application within one year can be a major financial drain on yourself or your startup company, but waiting to file could be an even bigger financial risk. Also, avoid talking to anyone about your idea.

  • I have an invention, but I'm not sure if I'm ready to file the patent application. What should I do?

Often during the infancy, inventors will apply for a provisional patent application. In doing so, you protect your invention by establishing the filing date, while also allowing you an additional year to file the nonprovisional application. Be aware that if additions are made between the provisional and the nonprovisional applications, those changes are not protected by the priority filing date. It may be beneficial to file additional provisional applications in order to protect your changes with the new filing dates.

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