Implications of New First-To-File Rule

The patent regime of the United States was set up by Congress to enable innovators to protect their ideas through monopoly ownership for a limited period of time. Because there are almost always many different individuals and groups working on solutions to problems that exist in the marketplace, it is not uncommon for several different people to independently arrive at the solution around the same time.

In this scenario, under the “first-to-invent” system currently used by the United States, the patent monopoly will generally be granted to the first inventor, even if a later inventor was the first inventor to file a patent application. Such an outcome is unique to the United States, as every other industrialized country uses a “first-to-file” system in which the patent monopoly is awarded to the first inventor to file.

On March 16, 2013, the United States will move to a first-to-file system. The new system is sometimes referred to as the “first inventor to file” system because a person who steals an idea from the real inventor and races to the patent office to file a patent application is not entitled to patent protection.

Under the new law, the best practice is to file a patent application as soon as the inventor has determined that a patentable invention has been discovered. Even for a development project that results in several innovations being discovered over time, an inventor would be wise to file multiple patent applications as new discoveries are made over the life of the project.

A partner at Carstens & Cahoon, LLP, James Gourley focuses his practice on intellectual property law, franchise law, and litigation and helps clients build strong intellectual property portfolios. 

This blog is maintained by Carstens & Cahoon, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.cclaw.com.

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