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 awarded the patent.
Under the first-to-invent system, the inventor who first conceives and diligently proceeds to either file a patent application or build a working prototype is awarded the patent. The inventor also had up to one year (i.e., one year grace period) after the first public use, offer for sale or distribution of a printed publication (e.g., brochure, website or flyer) to file a corresponding patent application. Even if a third party filed a patent application before the inventor (i.e., intervening patent application), the inventor could still be awarded the patent because the date of conception of the invention determines who is awarded the patent.
Under the first-inventor-to-file system, the inventor who first files a patent application with the United States Patent and Trademark Office is awarded the patent. In other words, between two inventors that file applications with the Patent office, whoever wins the race to the patent office is awarded the patent. Under a pure first-to-file system such as in Europe and China, if the inventor publicly uses, offers for sale or distributes a printed publication before filing the patent application, then no patent would be awarded to the inventor. The inventor’s own actions work against him or herself under the absolute novelty requirement.
In the U.S., the first-inventor-to-file system is similar, but not identical to pure first to file systems. Inventors can still take advantage of the so-called one year grace period, but it does not operate in the same manner as the one year grace period under the previous first-to-invent system. Therefore, some inventors may inadvertently jeopardize their rights if they are still operating under the assumptions of the old rules. The grace period under the old first-to-invent system, the inventor could swear behind and overcome a third party’s intervening patent application filing or sales activity. Under the new one year grace period under the first-inventor-to-file system, the inventor cannot remove a third party’s patent application filing or sales activity as prior art. In other words, under the first-inventor-to-file system, if the inventor waits to file a patent application and a third party files an intervening patent application, then the third party is likely to be awarded the patent, not the inventor who may have won under the first-to-invent system.
Under the first inventor to file system, what is the use of the one year grace period? In my opinion, the one year grace period under the first inventor to file system is used to salvage unintended public disclosures. Under a pure first to file system, an inventor would be prohibited from seeking patent protection if he/she had publicly disclosed the invention. Under the U.S. version of the one year grace period, the inventor can still file the patent application but could lose the patent if someone else had won the race to the patent office.
The first-inventor-to-file system does provide for a few exceptions for overcoming an intervening filing by a third party. However, these exceptions generally require the third party to have some sort of communication or access to the inventor’s information. However, due to the high cost of litigation and uncertain outcome, in my opinion, only a few of these challenges will arise. As such, it would be best to avoid such situations and file the patent application before any sort of marketing efforts. The mantra now is to file early and file often.
I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.