In 2013, the United States transitioned from a first-to-invent system to a first-inventor-to-file system under the America Invents Act. A basic difference in the two systems is that the first-to-invent system focuses on the inventor’s date of conception, whereas the first-inventor-to-file system primarily relies on the filing date of the patent application to determine who is … [Read more...]
First to invent
Pre America Invents Act, the inventor who conceived of the invention first for up to one year prior to the filing of a corresponding patent application and used due diligence to actually or constructively reduce the invention to practice will be awarded the patent. Browse related articles below.
Sanofi v. Pfizer (Fed. Cir. November 5, 2013) illustrates one situation in which the older, pre-America Invents Act (AIA), first-to-invent rules benefited a junior filer, and the patent was awarded to the junior filer. Under the current first inventor to file rule, the senior filer would have been awarded the patent. In this case, Sanofi first filed a patent application on … [Read more...]
What should you do? You have a provisional patent application which was filed pre-AIA (i.e., before March 16, 2013). You want to file a non provisional patent application with additional subject matter and claim priority to the provisional patent application while still maintaining first to invent status of the subject matter you filed in your provisional patent … [Read more...]
On March 16, 2013, the United States will transition from a first to invent system to a first to file system under the America Invents Act (“AIA”). In my opinion, it is more advantageous to have a patent application governed by the first to invent system than the first to file system even though the first to invent system for the most part behaves like a first to file … [Read more...]
In the United States, the first person to invent is entitled to a patent. When two different inventors file two separate patent applications on the same invention, the courts will initially look to the filing dates of the patent applications to see who was the first to file. Since the first to file can prove a date of invention prior to the second filer based solely on the … [Read more...]
The following case illustrates the importance of documenting an invention’s development. Under current U.S. Patent Laws, the first-to-invent is awarded a patent on an invention and not the first to file a patent application. The reason is that the first-to-invent rule appears to be more fair compared to the “first to file” rule. The first-to-invent rule rewards the first … [Read more...]