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 filing dates of the patent applications, the burden of proof is on the second filer to provide evidence of an earlier date of invention. The second must submit evidence to show that he/she either (1) conceived of the invention before the filing date of the first filed patent application and diligently worked toward submitting a patent application on the invention or (2) made an actual working embodiment of the invention prior to the filing date of the earlier filed patent application. Otherwise, the first filer will win the litigation over who should be awarded the patent.
In Schendel v. Curtis, Schendel and Curtis both filed patent applications directed to a fusion protein. However, Curtis filed the patent application (3) months after Schendel. According to the filing dates of the two patent applications, Schendel was the first to file and Curtis had the burden to show a date of invention prior to the filing date of Schendel’s patent application. Curtis attempted to challenge the filing date of Schendel’s patent application by showing that Curtis made a working model of the invention prior to the filing date of the earlier application. To this end, Curtis provided various documents which ultimately failed to provide sufficient evidence to show that Curtis made a working model of the invention prior to the filing date of the earlier filed patent application. Hence, Schendel was awarded the patent. Schendel v. Curtis, 38 U.S.P.Q.2d 1743 (Fed. Cir. 1996).
The earlier filing date of Schendel’s patent application shifted the burden of proving the case to Curtis which is a significant advantage to Schendel. Schendel relied solely on the filing date of his patent application. Curtis may have been the first to invent but, without sufficient evidence, was unable to successfully overcome the burden of proving “first to invent.” Accordingly, the earlier filing date provided Schendel with the needed advantage to win his case.
The United States following a first-to-invent rule is unusual compared to most other foreign countries that follow the first-to-file rule. Nonetheless, there are significant benefits to filing first in the United States as illustrated above. Also, the United States provides a one-year grace period for inventors to commercialize, send out brochures to potential clients, and offer their inventions for sale to the public before a patent application must be filed. Many foreign countries require that a patent application be filed first before triggering any of these events to preserve the right to seek patent protection. Nonetheless, as illustrated above, the first inventor to file a patent application has significant advantages in determining which of two inventors should be entitled to a patent on the invention.
To the extent possible, it is often beneficial to file patent applications early and often to gain the advantage of being the first to file. There may be budget constraints, different products may be at different product development stages, etc. that would prevent or delay the filing of the patent application. Nonetheless, seek the advice of a competent patent attorney on how best to cost-effectively protect your inventions.
You may also be interested in Importance of Documenting the Invention.
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