U.S. Patent System Switches to “First to File”

The U.S. patent system underwent an historic change this weekend.  No longer is it the “first to invent” who has the right to a patent.  Now the “first to file” a patent application will be awarded a U.S. patent.  The change is part of the America Invents Act and went into effect March 16, 2013.

US Patent Office - first-to-file patent

Much of the rest of the world, including the European Union and Canada, has already been following a first-to-file rule.  The United States was an outlier in requiring proof of being the first to invent.  Critics long complained that America’s former system led to lengthy delays in reviewing patents, and to costly litigation that smaller businesses, especially, could not afford to fight.  In the past you were required to prove that you first invented the invention.

Under the new first-to-file rule it should — theoretically at least — be easier to determine who gets the patent. The U.S. Patent Office simply will look at who filed the patent application first.

Not everyone agrees, though.  Attorney Otis Littlefield of law firm Morrison Foerster, writes in a client alert (PDF) that the opposite is the case:  it will be harder to get a patent under “first to file.”  Why? Because under the new law, a public disclosure (even in an academic paper or at a scientific conference) of the invention may negate your patent application, despite being the first to file. It’s all due to complexities in the new law, around public disclosures.

Wired notes that there will be a new urgency to file early and often. That could work to the advantage of large corporations, and put small businesses and startups at a disadvantage.  Young and small businesses have fewer resources (time and money) to put toward patent applications.

So, what’s an inventor to do?  Most legal experts are recommending these two things under the new first-to-file patent system:

File early –  In the past, you might have waited until your product went to market before filing at the patent office.  Now you need to consider filing earlier. For startups and individual inventors without customers, this could be a financial drain and difficult to afford for an unproven product.  But waiting could be a bigger financial risk.

Don’t talk about or disclose your invention – I know, I know. There’s nothing that startup entrepreneurs love better than to show off their product and talk about how it will change the industry or the world. However, under the new patent law, public disclosure by a third party prior to the patent application can negate the “first to file” rule.  For example, if you discussed the invention with someone (without a binding nondisclosure agreement) and that person discloses your invention publicly, it could undermine your patent rights.  That person doesn’t even have to steal your invention. Merely revealing it publicly is a problem.

There is, however, a one-year grace period for your own public disclosures. That one year grace period is intended to give inventors a chance to test the market.

For inventors the first-to-file patent system will be a huge change.  The best thing is to consult a patent attorney as early in the invention process as possible so you know how to protect your invention.

11 Comments ▼

Anita Campbell - CEO


Anita Campbell Anita Campbell is the Founder and Publisher of Small Business Trends and has been following trends in small businesses since 2003. She is the owner of BizSugar, a social media site for small businesses, and also serves as CEO of TweakYourBiz.com.

11 Reactions

  1. Kip Marlow

    An excellent article. This patent law change is HUGE for small business, and will be more expensive. It probably needed to be done, but effects on small business owners who are bootstrapping could be very negative over the long term.

    • Anita Campbell

      Kip, The Patent Office has decreased some filing fees for smaller businesses. While that is helpful, the filing fees are just a small part of the costs of a patent application.

      The bigger expense is in seeking out the assistance of a patent attorney — not that I am suggesting people avoid an attorney. On the contrary, for things like patents you don’t want to fool around on your own because there are too many exceptions and uncertainties. You need all the legal help you can get to protect a valuable invention.

      - Anita

  2. I support anything that makes the government system simpler and less costly (to taxpayers and filers) so this sounds like a step in the right direction. Next step is to figure out how to handle patent trolls.

    • Anita Campbell

      Robert, I agree wholeheartedly on the patent trolls.

      Although I wonder whether this new rule makes things simpler. At first glance, you’d think so. But decades of established legal decisions could be thrown out the window — it’s a whole new world now.

      - Anita

  3. An inventor may want to publish about an invention early as a competitive move to prevent another inventor from filing first. Inventor A publishes March 1, and inventor B files March 2. Inventor A may still get the patent by filing an application within one year. Her patent application will be effective even though filed later.

    • Anita Campbell

      John R, yes. But you’ve described an example of exactly why inventors should talk with an attorney early on, because that kind of strategy is based on understanding all the nuances of the law and some legal strategy. It’s well beyond the scope of my brief news update. Entrepreneurs who know next to nothing about patent law are much better off keeping their mouths shut until they talk with a patent attorney and can make deliberate choices, not accidental ones. That is the safest course for newbies. :)

      - Anita

  4. Hi Anita… good article. we are a small corporation but are very active in the IP area, and i would agree about getting an attorney involved early on. We manage costs by using patent agents rather than attorneys in the early stages of work, saving the attorneys for the “heavy lifting” if necessary later on. a patent agent can help get patents written quickly and get filings sent in, etc., filling in for an attorney for all the routine patent work. Having said that, it is important that the patent agent be up to speed on both the new laws here in the states, but also all the issues associated with foreign filings. when we file overseas we employ a law office that specializes in that sort of thing…

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