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Patent Race Heats Up: What “First to File” Means for Entrepreneurs

What would happen if you were awarded a patent, and then someone else claimed that they had invented it first? In the past, your patent claim could have been on the line. But those rules are changing. On March 16, the US patent office is moving from a “First to Invent” to a “First Inventor to File” system, as part of the America Invents Act (AIA).

If you don’t know what it all means, you’re not alone. Our recent survey revealed that 66 percent of inventors and 92 percent of small business owners are not aware of the new patent law or are unsure. Check out our infographic for the full results, and scroll down for more information about how the AIA affects you.

Ready, set, invent!


What’s the difference between “First to Invent” and “First to File”?

Under a “First to Invent” system, if there are two pending patents for the same invention, the person who invented it first gets the patent rights. That system has been problematic because it leaves patents open to litigation down the road. For example, someone may get a patent legitimately. Then years later, another inventor could claim that they invented it first, and should have the patent. Legal battles ensue. In addition, most other countries operate on a “First to Invent” system, creating additional challenges.

In the new “First Inventor to File” (aka First to File) system, the first inventor to file the patent gets the patent rights, regardless of who invented it first. It sounds simple, but there are a few nuances to the rule:

  • An invention cannot be derived from someone else’s invention (even if the original inventor hasn’t been submitted to the patent filing process). That doesn’t mean multiple people can’t have the same idea, however. In many historical instances, there have been inventions created simultaneously, or close to it. Think of the motion picture camera, which was developed simultaneously by different inventors around the world. In this “First to File” system, as long as the inventions are not derived from each other, the person who ends up with the patent is the one who files for the patent first.
  • An inventor can use a public disclosure to to prevent others from patenting the same idea. If an inventor makes a public disclosure of the invention, which is then followed by a patent application within one year, others will be barred from getting a patent for the same invention during that time.

The AIA website explains it well:

Essentially, these [public disclosure] exceptions allow the inventor, by being the first to publicly disclose the invention, to bar all others from obtaining a patent. This public disclosure will not jeopardize the inventor’s/discloser’s rights as long as an application is filed within one year of the disclosure.

What’s the bottom line for inventors and entrepreneurs?

Timing is everything. Starting on March 16, coming up with that great idea isn’t enough to protect your rights to the patent. You either need to go through the correct disclosure process and follow it with a patent within one year, or simply file your patent as soon as you can.

While Obama’s stated goal with the overall act was to “speed up the patent process so that innovators and entrepreneurs can turn a new invention into a business as quickly as possible,” many commentators have theorized that the new rules actually benefit big business interests who can afford to apply for patents proactively, and who have the capital to pay the legal costs of patent filing.

But small businesses don’t have to lose out. With a Provisional Patent Application, inventors can file a simplified patent application that secures their filing date. It has to be followed by a full patent within a year, but during that time, it protects the inventor’s rights to the patent while he or she takes care of the more thorough patent process.

We’ll help you create a Provisional Patent Application, step-by-step. Whether you want to find a lawyer to ask a quick question or to get a consultation about your intellectual property, we make it simple and affordable.

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