In the year of 2013, United States of America adopted the ‘First Inventor to File’ system from the ‘First to Invent system’ under the American Patent Law. Both the phrases are self-explanatory; the former emphasizes on the inventor whereas the later put the date of filing of an application first. This passage bears significant importance and stresses upon the factors on how to deal with the First Inventor to File patent system.
Patent Systems: First Inventor to File Vs First-to-Invent
Before proceeding further into the pros and cons of this patent system metamorphosis let us understand wherein the major difference lies in between these two systems. For this, we need to know three basic components of the patent law. They are as follows:
- Date of Conception– The conception term is denoted as to when the concept or idea came to the mind of the inventor.
- Date of Actual Reduction to Practice– This deals with the construction of a tangible form of the conception which can display that the efficacy of the invention.
- Date of Constructive Reduction to Practice– This includes the filing of a patent application by the inventor.
The ‘First-to-Invent’ system may sound easy but it is quite an expensive procedure. In the USA, an inventor if cautiously derives or creates a tangible form of his concept or idea, and files a patent application then he/she gains the privilege of gaining a patent provided he abides by other rules and regulations. However, in certain scenarios, two individual inventors may file an application for the same invention. In this situation, to determine the rightful owner of the patent (rather who conceived the idea first) there may be an interference hearing before the Board of Appeals and Interferences at the US Patent Office. The ‘First-Inventor-to-File’ system assures that the inventor who has filed the patent application initially be the rightful owner irrespective of the conception date.
The ‘First-Inventor-to-File’ system doesn’t guarantee that the first person to run to the patent office and file an application will be the rightful owner. All previously filed applications or disclosures if any are taken into consideration before granting of a patent under this system. A helpful part of this system is that it doesn’t take “secret prior-arts” into consideration. A secret prior-art is an invention for which patent application has not been filed. Thus ‘First-Inventor-to-File’ system adds more advantage.
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First Inventor to File: How To Deal?
Let us understand how one can deal smoothly with this patent system transition. Below mentioned are some points to be noted:
1# Get a clear understanding of the ‘First-Inventor-to-File’ system. Accordingly, you need to construct and execute your patent strategy. A good patent attorney or a patent agent can sail you through this pathway effectively.
2# The first-inventor-to-file rules will be used for applications with an effective filing date of March 16, 2013, or later. The term to be understood is “effective”. The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) as the earliest of: (1) the actual filing date of the patent or the application for the patent containing the claimed invention; or (2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, 365, or 386. The effective filing date provides some judicious opportunities for start-ups as well as large business organizations and companies.
3# Be swift while assigning your corpus to inventions. As an entrepreneur/ start-up/ any medium or large company, you must be quick enough to target the propitious invention and go ahead for their protection.
4# Do not neglect the value of a provisional patent application. It ensures that you get a fixed “priority-date” and that your invention obtains an initial protection. The method is quite pocket-friendly and leaves options of international filing too. Provisional patent applications, however, have its shortfalls too. Once you file a provisional application, it is a mandate to file a Complete Specification containing all the Claims within one year. Else the application is considered to be abandoned. A provisional patent application will be advantageous in a ‘First-Inventor-to-File’ system if utilized properly.
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