International Patent & the First-to-File System

International Patent & the First-to-File System


When a patent application has been filed, and a fight for patent rights in the product breaks out between that party and another party, it used to be called an interference. Interference is still relevant for applications filed before March 16, 2013.

Derivation Proceeding:
A proceeding conducted before the new PTAB to ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent. If a true inventor is not the first to file, the true inventor may challenge the first applicant’s right to a patent by demonstrating that the first application is claiming an invention derived from the true inventor. The derivation proceeding addresses the shift of the U.S. patent system from a first-to-invent to a first-inventor-to-file system.

On September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act (“AIA”).  The main provisions went into effect on March 16, 2013.

This act presents a fundamental change to the United States patent system, as it changes it from a “first-to-invent” system to a “first-inventor-to-file” system (similar to the “first-to-file” system used in most countries).  Applications filed before March 16, 2013 fall under the previous system.

Before the AIA, the novelty requirement of §102(a) barred patents on inventions “known or used by others…before the invention thereof by the applicant….” (emphasis added). The whole basis of the U.S. patent system was that the exclusive patent rights to a new product (or process) should go to the first person who invented it. This has certain merits, not least of which is that it seems to agree with our instinctual concept of fairness insofar as the most creative and prolific individuals will benefit the most from using their skills. 

However, §102(a) currently bars patents on inventions patented, described in a publication, in public use, on sale, or otherwise available to the public before the effective filing date of the application.  This effectively creates a first-inventor-to-file system, which has its own merits and drawbacks.  The biggest merit is that it reduces certain types of patent fights between inventors, and it also brings the US into alignment with most of the world.  A big drawback is that such systems incentivize and create ‘races to the patent office,’ which might lead to a reduction in the quality of patent applications.

EXAMPLE: On May 5, 2005, Deborah invents a birthday hat for dogs which is uniquely designed to stay on their heads. On August 1, 2005, PetProducts, Inc. independently invents a nearly identical celebratory chapeau for dogs. Under the current U.S. system, if PetProducts, Inc. files for a patent right away (and Deborah has not filed anything yet), Deborah could not prevent PetProducts from being granted the patent and could not receive her own patent on the novel and useful (!) product, even though she was the first inventor.

(The following discussion of old procedures is relevant since patent applications filed before March 16, 2013 still exist under the old system.)

Under the old system, Deborah could have prevented PetProducts from acquiring the patent but her ability to prevail under the first-to-invent system depends on her ability to prove that she invented the product before PetProducts did. She will have to convince the PTO that her creation pre-dates the nearly identical creation for which PetProducts is seeking a patent.

Patent interference cases, such as the one which would ensue between Deborah and PetProducts, accounted for less than 1% of all patent filings between 1983 and 2004 (there were 3,253 two-party interferences during that period). “A Sea Change in Patent Law,” Steve Seidenberg, ABA Journal, January 2006. Nonetheless, these interferences can be costly, and they create a certain degree of uncertainty in the outcome of the patent application process for inventors filing applications in the United States. It might seem fair to grant Deborah the patent in the example above, but what if she spends a great amount of money trying, in vain, to prove that she invented the dog hat first? PetProducts keeps impeccable records of their research projects, while Deborah has only the testimony of her husband (and the love of her dog).

Other countries and the US (now) base their patent on a first-to-file system. In such a system, an applicant does not need to worry about anyone who might have thought up and used the invention before the applicant did, so long as nobody has yet filed for a patent on the invention. A later inventor can obtain the government granted patent monopoly simply by beating a prior inventor in the race to file.

EXAMPLE (1): Deborah knows that the U.S. patent system is based on first-to-file. Throughout the month of May she works with a patent attorney who drafts her claim, and on June 16 she files her patent application. In this scenario, she need not worry about providing evidence about the date of invention, as beating all others to the application process establishes her priority.

EXAMPLE (2): On August 1, PetProducts, Inc. files their patent application for the dog hat while Deborah files her application on August 2. Regardless of Deborah’s pleas for fairness, and despite overwhelming evidence that she invented the hat first, PetProducts’ patent application will not be denied simply due to Deborah’s prior invention of the product.

A great deal of speculation is involved between deciding which system is better, and it seems unlikely that anyone could be make a final determination as to which system benefits which group of inventors.