US Patent First to File: Everything You Need to Know
The US Patent First to File program is the application system that determines who is recognized as an invention's official inventor and the date of invention.3 min read
3. Quality of Invention Disclosure
4. Effect on Small and Independent Inventors
5. Effect on Universities
6. Harmonization of Patent Law
7. How Can I Use the FTF System to My Advantage?
8. What if I Have an Invention But I'm Not Ready to File?
9. The Risk of Not Filing a Patent Application Immediately
The US Patent First to File program is the application system that determines who is recognized as an invention's official inventor and the date of invention. The first patent application filed is the formal record for that invention. The United States Patent and Trademark Office has transitioned from a First to Invent (FTI) system to a First Inventor to File (FTF) system. President Obama signed the FTF into effect via the America Invents Act (AIA) in September 2011, effective March 2013.
First-to-File vs. First-to-Invent
Historically, the United States has had a First to Invent (FTI) system, honoring the date of conception as the priority date and entitling that inventor to the patent. The First to File system awards the patent to the inventor who filed the patent application first, meeting all stipulations.
Important patenting dates include:
- Date of Conception: Date the inventor first conceived the complete invention.
- Date of Actual Reduction to Practice: Date a working model was built.
- Date of Constructive Reduction to Practice: Date the patent application was filed.
Under the FTF system, the filing date is the official record of patent application and ownership. Under the FTI system, the date of conception is considered the priority date, assuming all supporting documents correspond.
The U.S. Constitution protects people's ownership of exclusive intellectual property rights. A common argument against an FTF system is that the founding fathers would have been more concerned with invention dates and not application filing dates. Copyright law supports that argument. Based on the same constitutional clause, the owner is not determined by when the copyright is registered but by when the unique concept or idea is established.
Quality of Invention Disclosure
With a focus on filing the patent application promptly, certain elements of the process are rushed, causing a number of potential problems:
- Less time spent researching prior art to determine patentability.
- Less time spent on the application, reducing the quality and breadth of disclosure.
- Working prototypes are no longer the "best mode" of the invention and are now rushed to speed patenting.
Effect on Small and Independent Inventors
In an FTF system, the independent inventors are disadvantaged against large corporations with established committees and attorneys on staff. They tend to have existing procedures for patent applications, more inventors, and plenty of money for the process. Small companies, however, can move faster when they identify a patentable innovation and can make decisions to protect it without multiple levels of approval. These companies typically do better under an FTI system.
Effect on Universities
While universities focus on research, professors focus on publishing and sharing information. The introduction of FTF could greatly reduce university patents and potential revenue if scientists do not meet the 12-month deadline to file due to busy schedules publishing and presenting their findings.
Harmonization of Patent Law
The main argument to change U.S. patent law to the FTF system is to coordinate with patent laws in the rest of the world, except the Philippines. Arguments against such a transition include:
- The U.S. FTI process was one of the first and most developed patent systems in the world.
- The U.S. is the only country to mention intellectual property in its founding documents.
- The U.S. was the first country to recognize that business methods and software are patentable.
How Can I Use the FTF System to My Advantage?
- File before anyone else.
- Identify new inventions quickly, and protect them.
- File only fully formed, descriptive applications with sufficient documentation.
- File as soon as you've conceived your invention completely.
What if I Have an Invention But I'm Not Ready to File?
If you're in the early stages of your invention, you can file a provisional patent application. This gives you up to a year to file the full application, which would only include the information you protected previously. You can file additional provisional applications as needed, but make sure you tie them all into the final filing.
The Risk of Not Filing a Patent Application Immediately
If you wait too long, the main risk is that someone else could file on your invention. You should file first before disclosing any information, offering your product for sale, or giving any public demonstrations. While you might hear different advice from life and business coaches, your patent attorney will always tell you to file first and as quickly as possible.
If you need help with US Patent First to File, you can post your legal need on UpCounsel's marketplace. UpCounsel hires only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.