Under current U.S. patent laws, the first inventor to file (FITF) a patent application on an invention is awarded the patent. This means that if two individuals separately file patent applications on the same idea, then the person who first filed its patent application in the U.S. Patent Office will be awarded the patent. The Patent Office merely looks to the filing dates of the respective patent applications to determine who will be awarded the patent. Exceptions to this rule exist but generally have limited value.
To fully understand the first inventor to file (FITF) rule, it is crucial to also keep in mind how the bars to patentability and the one year grace period play into each other. The FITF rule retained the one year grace period under the old first to invent rule, but with significant limitations. Under the first inventor to file (FITF) rule, the inventor can technically market the invention to others and wait up to one year to file a patent application (i.e., one year grace period). Marketing efforts relate to the traditional bars to patentability such as demonstrating the invention to the public (i.e., public use), publicly offering the invention for sale (public offer for sale) or distributing a printed publication of the invention (i.e.., printed publication).
Unfortunately, as discussed below, if the inventor files the patent application after the start of marketing efforts, then under the first inventor to file rules, then inventor is lulled into a false sense of security. To understand this better, let’s compare the new one year grace period under the new first inventor to file rule with the old one year grace period under the old first to invent rule.
Under the old one year grace period and old first to invent rule, if a third party steals the inventor’s idea and submits a patent application before the inventor, then inventor can swear behind the filing date of the third party’s patent application even though the inventor had waited to file the patent application and filed its patent application after the third party. The inventor can do this by relying on its date of invention which will be prior to the filing date of the third party’s patent application. If this is not so, then the third party couldn’t have stolen the invention from the inventor. The “swearing behind” process is fairly inexpensive. The inventor submits a document during examination of a patent application to the examiner with evidence showing a prior date of invention. Swearing behind disqualifies the third party’s patent application as prior art so that it does not block the inventor from obtaining a patent.
Under the old law, if the claims presented in the inventor’s patent application and the third party’s patent application are so similar that they are essentially claims to the same invention, then the proper procedure was an interference proceeding where the Patent Office conducts a mini-trial to determine who was the first inventor. However, interferences were seldom instituted and the above conflict between the inventor and the third party was for the most part resolved by swearing behind the third party’s patent application.
In contrast, under the current, new first inventor to file (FITF) rule, the inventor still has some recourse against the third party by filing a derivation proceedings to determine whether the third party is a true inventor. However, such proceedings are expensive compared to the relatively inexpensive process of swearing behind the third party’s patent application under the first to invent rule.
The FITF rule also allows one to file a declaration that the inventor first published the invention prior to the filing date of the third party’s patent application. However, this does not disqualify the entirety of the third party’s patent application as prior art and can still block the inventor from obtaining a broad claim for patent.
Under the FITF rule, the inventor may have valid and enforceable rights against the third party. However, in this early stage of marketing the product or idea, many companies and inventors will not proceed with the derivation proceeding due to the risk and expense of the derivation proceeding. Also, even if the inventor can avoid the derivation proceeding, the third party’s patent application is still prior art and in certain circumstances may completely block the inventor from obtaining a broad claim for patent protection.
These reasons explain why it is bad idea to market an invention before filing a patent application under the current new FITF rule. The inventor is at risk of expending a great deal of time and money on marketing and prototyping only to find out years later that a third party has filed a patent application before the inventor which may block the inventor from obtaining a patent.
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.