New patent law will give awards to ‘first to file’

Last updated on May 24th, 2022 at 08:23 pm

By now you are probably aware of the buzz surrounding the recently enacted patent reform legislation. One of the most talked-about provisions is the switch from the current “first to invent” system to a “first to file” system.
As the name indicates, the first to invent system awards a patent to the first person to come up with the invention. If two independent parties seek a patent on the same invention at the same time, the Patent Office determines who was actually the first to invent.
A first to file system, used in most other countries, awards a patent to the first inventor to file a patent application. Should two parties come up with the same invention independently and in the same time frame, the first to file his patent application will be rewarded with the patent. Read the article at to know how to file a patent.
Perhaps the most important impact of the switch to a first to file system will be the increase in the amount of “prior art” that can be used by a patent examiner to reject your patent application. Prior art includes publications, sales, offers for sale and public activity undertaken by third parties. Currently, this prior art is disqualified from use against your patent application if it is generated within the year leading up to your application filing date. In short, there will be one year’s worth of additional prior art that can be used against your patent application.
To minimize the chances that another inventor beats you to the Patent Office, and to reduce the amount of potential prior art standing in the way of your application, you should strive to file your patent application as early as possible.

Recommendations and helpful strategies

1) Encourage inventors to submit their inventions early.
With the emphasis on early filing, it is even more important to encourage inventors to quickly document their inventions and pass them on to those responsible for making patent decisions. A decision regarding when to file cannot even be contemplated if the invention is not presented to the decision-makers in a timely manner.

2) Have a process and strategy in place for making patenting decisions.
Once the invention is documented and passed along to management, it is important to expedite the decision on whether to proceed with seeking patent protection. In companies where inventions are routinely developed, a process should be established for quickly making the business decision on whether to file a patent application, and for communicating that decision to patent counsel. An overall patent strategy should be developed to provide objective guidelines that can be considered during the decision-making process.

3) Use provisional patent applications during ongoing development.
Provisional patent applications are preliminary patent applications often used as a tool to secure a filing date for an invention that is not yet fully developed.  Provisional patent applications must later be “formalized” by filing a subsequent non-provisional patent application.  One strategy might be to file a series of provisional patent applications over the course of one year, culminating in a final non-provisional U.S. application and any foreign applications that include the contents of all earlier-filed provisionals. This strategy is not new, and can increase costs, but will likely become more widely used with the switch to the first to file system. The broadest concepts of the invention can be filed in a first provisional application, and as additional developments occur, supplemental provisional applications can be filed adding the new details.

4) Create template patent applications to expedite drafting.
If inventions commonly relate to a specific field or technology, it may be worthwhile to have a template patent application document prepared in advance. The template document can thoroughly describe the general technology area, laying the groundwork for anticipated filings. Having this generic background information in place makes quicker work of completing the application — simply add the details of the invention into the proper location within the template document.

The recommended procedures and policies discussed above are worth implementing now, even in these last 18 months of the current first to invent system. When first to file takes effect, you will already be in a great position to embrace the change.

Attorney Richard Kaiser is a partner at Michael Best & Friedrich LLP in Milwaukee.

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