A provisional patent first to file refers to the rights accorded to an investor who first filed a patent application. Under U.S. patent law, an exclusive monopoly is granted to the owner of a valid patent.

Obtaining a patent requires an applicant to file a patent application with the USPTO (U.S. Patent and Trademark Office), the agency in charge of administering patents.

The Objective of Obtaining a Patent

The objective of obtaining a patent is the exclusion of others from either obtaining the same patent or using the invention.

Still, there are cases where two inventors created similar inventions and then filed a patent application at approximately the same time.

Shifting from First to Invent to First to File Rule

For decades, the U.S. awarded a patent to the applicant who proved that he/she first created the invention. However, the America Invents Act caused the U.S. to shift its rule, awarding the patent to applicants who first filed the patent application.

This became effective on 16th March 2013 and impacts significantly on the way inventors secure their rights through the patent system.

Throughout history, the U.S. was one of the few countries who used the first-to-invent system in awarding patent rights. This means that the applicant with the superior claim was one who first conceived of the invention and was the first to practicalize the invention.

If two individuals claimed to be the first to create the invention, the USPTO held a hearing that enabled each applicant to provide evidence of the invention's practice and conception.

However, these proceedings were time-consuming and expensive and became difficult especially in situations where it is unclear what the exact moment of invention was.

In the face of increasing globalization, more legal complexities were created due to the different filing system maintained in the U.S.

Creation of the American Invent Act

Through the enactment of the American Invents Act, the U.S. Congress aimed to modernize the various aspects of U.S. patent law. One of the most significant changes was the change from first-to-invent to first-to-file for the filing of all patent applications after March 16 2013.

Although exceptions may arise in cases where the registration date was filed in a foreign country or when a patent application had multiple claims, the filing date of the patent application always takes precedence.

In effect, this means that arguments as to when an applicant invented the novel chemical, formula, device or widget would no longer establish patent rights.

Implications of the First to File Rule

The shift to the first-to-file system places America in closer proximity to other nations in the manner that its patent system is structured. As such, this rule will have significant implications for inventors seeking a U.S. patent.

This rule means that inventors have a clear incentive for filing a patent application as soon as possible. The sooner an inventor files a patent application, the sooner others are excluded from using said invention or filing another patent application.

Acquiring a Provisional Patent

One of the common methods used by inventors to establish an early filing date is through the acquisition of a provisional patent. Since a provisional patent application doesn't need to include information regarding prior art, a formal patent declaration or claim, and other relevant materials, it is much easier and less costly to obtain.

An additional benefit of obtaining provisional patents is that inventors can use the “Patent Pending” term in connection with their invention. This could be helpful during negotiations concerning sales and royalties.

Negative Consequences of the First to File System

However, there are negative consequences to the first-to-file system. Many believe that it discourages small inventors with limited resources and limited access to lawyers that could file the patent (or provisional patent) application on their behalf. Under the previous first-to-invent system, these inventors could simply maintain accurate records of the invention's development while looking for investors and designing/improving their inventions.

Under the first-to-file rule, they must race against their competitors in order to first file their application with the USPTO. Some scholars are also of the opinion that the current system will encourage the action of patent trolls — entities who buy patents just for the right to sue for infringement but do not use the patent for any practical purposes.

The new system puts tremendous pressure and strain on small entities with limited resources. This means that inventors who didn't file their patent application on time could lose their patent even if they were the first to invent.

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