skip to main content

U.S. Patent Law Adopts the International First-to-File Standard, But with Catches

One nearly universal rule in International Patent Law is that patent rights to an invention go to the first applicant to file a patent application. For decades, the United States has been the most notorious holdout against this first-to-file standard. The U.S. had been the last major industrial country in the world to retain a first-to-invent rule, under which patent rights are granted to the first inventor or group of inventors that actually invent an invention, regardless of who files first.

This will soon change. On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (the "A.I.A."), which includes a highly anticipated change to a first-to-file standard for U.S. Patent Applications.

A.I.A. Overview

The A.I.A. addresses many far-reaching and often unrelated aspects of U.S. Patent Law. The A.I.A.'s first-to-file rule comes into effect on March 13, 2013. Although a major A.I.A. objective is to harmonize U.S. Patent Law with international standards, the A.I.A. can actually create traps for applicants seeking patent protection in multiple countries.

The A.I.A. is also riddled with exceptions, details, and ambiguities that potentially affect most patent applicants. Failure to comply with any of the A.I.A.'s requirements or failure to recognize resulting ramifications can have dire consequences to any business relying on patents to protect valuable technology.

Comparison: First-to-File vs. First-to-Invent

Consider Inventor A who invents a device on March 1, 2014. Inventor A works diligently to refine the invention and files a patent application on November 1, 2014. Inventor B also independently makes the same invention on May 1, 2014 but manages to file a patent application on August 1, 2014. Under the pre-A.I.A. first-to-invent rule, Inventor A would have superior patent rights since Inventor A's date of invention is before that of Inventor B.

But under the A.I.A.'s new first-to-file rule, wouldn't Inventor B have superior rights because Inventor B filed a patent application first?

Well, maybe, but possibly not. The A.I.A. includes a one- year grace period for filing a patent application after a public disclosure, provided the disclosure is made by the inventor or by a third party that learned of the invention from the inventor. Under the A.I.A., the date of such disclosure also establishes a domestic priority right to the invention. If Inventor A keeps the invention secret until after the patent application is filed, Inventor B would have superior patent rights due to Inventor B's earlier filing date. However, if Inventor A publicly discloses the invention in March, 2014, the disclosure would make Inventor A's patent rights superior to those of Inventor B in the U.S. even though Inventor B filed an application first.

Unfortunately, such early public disclosure of an invention can destroy the right to extend protection to other countries. Most foreign patent systems impose a strict novelty rule on applicants, prohibiting any pre-filing public disclosure in any country. While the A.I.A. would encourage Inventor A to immediately disclose the invention publicly to secure U.S. rights, such disclosure would also block both Inventors A and B from pursuing additional patent protection abroad.

The A.I.A. and Your Business

Such comparisons represent just one example of why careful planning under the A.I.A. is critical. During the transition period from now until March 13, 2013, many businesses will need to consider whether new patent applications should be filed under the existing first-to-invent rule or delayed until after the A.I.A.'s first-to-file rule takes effect.

But how does one make this decision?

A good rule of thumb is to follow an invention's natural development. An inventor with an invention ready for disclosure today would be well advised to file a patent application as soon as possible and before March 13, 2013. Doing so would grandfather the invention under the first-to-invent rule, giving the applicant the benefit of the earliest invention date. Applicants filing patent applications on or after March 13, 2013 would be bound by the first-to-file rule, but would benefit from improved familiarity of the new system currently building in the legal and technical communities. This decision, which should always be made with the assistance of a Patent Attorney, ultimately depends on the specific circumstances of each applicant, including the applicant's business objectives in the U.S. and abroad.

For more information about patents and the America Invents Act, please contact Jon Woodard at MacDonald, Illig, Jones & Britton, LLP at 814-870-7664 or