The America Invents Act - Change from "First-to-Invent" to "First-to-File"

December 2, 2011, 3:28 PM

Perhaps the most significant reform effected by the America Invents Act (AIA) is its provisions that will transition the United States patent system to one in which the first inventor to file a patent application will generally be the one entitled to a patent on the invention in question. Under the current system this entitlement goes to the first to invent, regardless of whether he or she wins the race to the Patent Office. The change from a first-to-invent to a first-to-file system under AIA will go into effect on March 16, 2013, so everyone has a bit of time to adjust to this change, which is meant to bring the U.S. patent system more in line with the first-to-file systems that exist in most other countries.

As with any complicated legislation, there are subtleties to the AIA first-to-file rules that may lead to changes in the way U.S. inventors, companies and institutions plan and manage their approaches to patent protection. For example, publication of invention details might be useable in some cases to, in effect, preempt the priority of a later first-to-file application by a competing inventor. And strategies may evolve for use of continuation-in-part applications to bring claims under applications filed prior to the effective date of the first-to-file rules within those rules.

However, such changes in practice will likely be the exception rather than the rule. Inventors, companies and institutions seeking patent protection in the U.S. have always been well advised to file their applications as soon as possible, and the provisional application process makes this relatively easy to do. So, while the change from a first-to-invent to a first-to-file system is a major one and all who utilize the U.S. patent system should fully understand the new rules its impact at the practical, working level should not be severe. --Robert E. Smartschan