If you have an invention and you want to protect it in the United States, you need to get a patent from the U.S. Patent and Trademark Office (USPTO). The patent is a form of intellectual property (IP) protection that gives the creator of an invention the exclusive legal right to market, sell, manufacture, and profit from that invention. The patent offices require the application to have a competitive edge to sell the product within the lifetime of the patent. Then, the inventor may use his or her patented invention to sell it across the United States or around the globe.

Patent vs. Copyright

Patent protection is much stronger than other types of IP protection such as copyright. Copyright only protects the way an idea is expressed but does not prevent others from expressing the same idea in a different way. With patents, you have a right to prevent someone else from getting a patent for the same invention.

From ‘first to invent” to “first to file”

Historically, U.S. Patent Law used the “first to invent” rule to protect inventors. Thus, if there are two or more inventors applying for a patent for the same invention, the patent would be granted to the inventor who first thought of the idea and put the invention into practice.

Patent FilingHowever, the rules changed in March 2013 when the America Invents Act went into effect. It has switched from a “first to invent” to a “first to file” rule. Since then, applicants who file the patent first have the right to sell the invention even if they are the ones who originally created the invention. If more than one person is seeking to file the same patent, the person that files first usually has the right to the successfully filed patent applications, even if these are just provisional patent applications or if that person didn’t come up with the idea in the first place.

To be clear, first-to-file does not mean that whoever files first will certainly obtain a patent. Even if the application was filed first, the applicant of the patent may be denied several times before the patent process is completed. These denials could give another applicant the opportunity to receive the patent.

Setbacks of “First to File” rule

If somebody beats them to a patent filing, an inventor no longer can get a patent in the U.S. even if they invented a product or process before anyone else did. Hence, it has become a race of whoever has the means to get the patent. This has caused some difficulties for inventors with limited resources. It was perceived that the rule favors corporate applicants with the resources to file patents faster than the individual inventors. These sole inventors usually do not have the time to apply for a patent themselves nor the means to pay for patent attorney fees. In effect, because of the race against time to apply for the patents, sole inventors may compromise the quality of their inventions because of the limited time to develop them.

Provisional Patent Applications

If you do not have the luxury of time nor the money to fund your patent, an option is to reserve your patent rights by filing a provisional patent application as soon as possible.

This option is more advantageous if you file before publicly disclosing the invention. In this way, you have hit two birds with one stone:

  • Security of an earlier priority date before a third party attempts to file for a similar invention after seeing yours; and
  • Right to file a patent application in a foreign country

Another option available to you is to file an early draft of the non-provisional application that your patent lawyer is working on, regardless of how unpolished it may be.  Later on, you can submit a continuing application for revisions. Even if you add new content in a CIP (continuing-in-part application) which would get a later priority date, this is still better than having filed no patent at all. At the very least, you are now able to get an earlier priority date for the content included even after filing a non-provisional patent application.

Otherwise, if you have publicly disclosed your invention, such as at a trade show, then you have only a one-year grace period to apply for a patent. This means that inventors have up to one year from their earliest date of public disclosure of their invention for  US patent application filings. You forfeit your patent rights if you fail to file within the 1-year grace period.

Road to progress with the “first-to-file” rule

In reality, the first-to-file rule is much simpler and easier to administer than the first-to-invent system.

Previously, with the first-to-invent rule, there have been challenges in determining which inventor holds priority. This type of patent application process resulted in lengthy patent litigation costing time and money for all concerned. More so if multiple inventors were vying for the patent. In this case, separate hearings are conducted by the UPSTO for each inventor. During the hearings, they will explain when they created and developed the invention. In order to prove that they had “reduced it to practice” before their competitor did, they must support their claims with documentary and testimonial evidence.

Another advantage of the first-to-file rule is that it aligns the U.S. system with the first-to-file priority systems of the rest of the world. With many U.S. businesses expanding globally, this uniform system can be an advantage and would reduce much of the uncertainty, time, and expense of obtaining priority under the first-to-invent system.

Getting Legal Counsel

Time is of the essence when filing a patent application for your invention. An earlier application can prevent others in the market from using your invention. It is a wise move to get professional legal advice from an experienced patent lawyer who will not only help you with intellectual property law, in general, and patent information, in particular, but will also offer you options on how to proceed with your patent application. Your patent attorney may also support you in patent infringement cases. Call our Washington DC patent attorneys at War IP Law for a free initial consultation