BizTech Law Blog

Part 1 - U.S. Patent Reform: First-to-File

On September 16th, President Barack Obama signed the Leahy-Smith America Invents Act into law.  The America Invents Act has been sold as "the biggest change in the U.S. Patents System since the 1950s."  However, the Act does not affect many of the fundamental tenants of U.S. Patent law and in fact is significantly modified from the bill that originally was proposed. 

This is the first of several blog posts that will summarize the most significant changes created by the America Invents Act.

FIRST-TO-FILE

Effective March 16, 2013, the U.S. Patent system will become a "First-to-File" system.  Previously, the U.S. Patent system was a First-to-Invent system, which means that the person who first invented the invention (the product) was entitled to patent protection.  The America Invents Act transitions the U.S. to a first-to-file system.  In such a system patent rights are granted to the person who is first-to-file a patent application covering the product regardless of whether that person actually was the first to invent the product.

Although this transition from a first-to-invent to a first-to-file system is seen as the major change in the America Invents Act, in reality this change is not going to be that significant.  During consideration of the bill, the director of the USPTO testified before the U.S. House of Representatives that of the 3,000,000 patent applications filed in the past seven years, only 25 patents were granted to small entities that were the second to file but the first to invent.  Thus, according to the Director of the USPTO, in the last seven years only 25 inventors in nearly 3,000,000 patent filings would have received a different outcome under a first-to-file system.

Stay tuned for upcoming posts regarding other provisions of the America Invents Act. Please contact me if you have questions.

Categories: Intellectual Property, Patents