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You are here: Home / Patent application process / Before filing a patent application / First to File / What is the First Inventor to File (FITF) provisions of the America Invents Act (AIA)?

What is the First Inventor to File (FITF) provisions of the America Invents Act (AIA)?

September 17, 2022 by James Yang

What is the first inventor to file (FITF) rule for patents?

The first inventor to file (FITF) rule in patents means that between two inventors, the Patent Office will grant a patent to the one who first filed a patent application regardless of when they conceived the invention.

For example, assume the second inventor to file conceived the invention on January 1 but filed on April 1.  The Patent Office would award the patent to the first inventor to file as long as the first inventor filed at any time before April 1, even if the first inventor conceived the invention after January 1. The first inventor to file conceived the invention after the second inventor to file, but the Patent Office will still award the patent to the first inventor because he or she was the first inventor to file.

Where do I find resources for the First Inventor to File (FITF) rule of the America Invents Act (AIA)?

You can read more about the First Inventor to File rule at the following link:

First Inventor to File (FITF) Resources

Is there an exception under a strict first inventor to file rule?

No exceptions exist in a strict first-to-file patent rule. The Patent Office looks solely to the filing dates of the various applications to determine who would be awarded the patent.  The first filed patent application is awarded the patent.

During the examination of the second filed application, the first filed application is considered prior art to the second filed patent application. The second filed patent application would be rejected as being not novel.

What are the exceptions to the first inventor to file rule in the United States?

Three exceptions to the first inventor to file rule exist in the United States.

First, the first filed application is not prior art to the second filed application if the first inventor obtained the invention from the second inventor.

Second, the first filed application is not prior art if the second inventor had previously published the invention before the filing date of the first filed patent application.

Third, the first filed application is not prior art if the first inventor to file had an obligation to assign the invention to the second inventor.

What is the first exception to the first inventor to file rule?

Under the first exception to the first inventor to file rule, the first filed patent application is not considered prior art to a second filed application if the second inventor can prove that the first inventor obtained the invention from the second inventor.

Assume that the first inventor to file obtained about the invention from the second inventor to file. By obtained, this means that the first inventor, for example, heard a presentation by the second inventor regarding the invention. Or, the first inventor had been in negotiations with the second inventor.

The first inventor then hurries to file a patent application with the Patent Office and becomes the first person to file. The Patent Office will eliminate the first filed application as prior art to the extent that the second inventor can prove the first inventor obtained the information from the second inventor. The second filed patent application will be allowed to mature into a patent.

However, the first exception does not apply if the second inventor cannot prove that the first inventor obtained the invention from the second inventor. For example, the second inventor must prove that the first inventor, for example, attended your presentation. Does the second inventor have an attendance list listing the first inventor? If not, the first exception may be useless to the second inventor in trying to eliminate the first filed application as prior art.

The exception to the first inventor to file patent rule hinges on the second inventor’s ability to prove that the first inventor obtained the information from the second inventor. Otherwise, the first exception is useless.

What is the second exception to the first inventor to file rule?

Under the second exception, the first filed patent application is not prior art when the second inventor can prove the second inventor publicly disclosed the inventor before the filing date of the first filed patent application.

For example, assume that the second inventor had attended a trade show on January 1 and filed a patent application on March 1. The first inventor to file filed a patent application on February 1.

In this instance, to the extent that the second inventor can prove what they had publicly disclosed the invention during the January 1 trade show, they can eliminate the first filed application as prior art. The second inventor to file is awarded the patent in this scenario.

However, the second inventor to file must be able to prove what they had shown during the trade show. The second inventor may believe this is easy to do, but it’s not in reality. Over time memories fade, and hard drives are erased or replaced. The second inventor may find a picture of what they had shown at the trade show. However, a picture of a product is just that – a picture of the product’s housing. It doesn’t explain how it works.

The second exception is useless if you cannot prove what you publicly disclosed in explicit detail.

What is the third exception to the first inventor to file patent rule?

Under the third exception, the first filed application is not prior art if the first inventor was obligated to assign the invention rights to the second inventor.

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James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

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