PROFESSOR RUTH OKEDIJI

First to File Patent SystemsHow the New U.S. System Compares to other

Systems Around the World

What is a “First to File” System?

Simple and EfficientClear RightsInnovation

Rights Granted to First Filer, not First Inventor

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Why have a First to File System?

Innovation Disclosed FasterMakes Rights ClearerEncourages Quick and Frequent Filing

Downsides Concerns regarding Small Businesses Blocking PatentsThe AIA requires a report from the SBA on the effects on small

business ofeliminating dates of invention in patent applications.

The Old U.S. System: First-to-Invent

United States: The Last Hold Out

First-to-Invent: Earliest Inventor gets the Patent Interference Procedures Grace Period

Proof Issues

Congressional Goals for the AIA

Two Major Goals for First-Inventor-to-File Provision

(1) Inventor Certainty in Rights

(2) International Patent Harmonization

The New System: First-Inventor-to-File

Patent Reform Enacted: September 16, 2011First-Inventor -to-File Provisions Effective: March 16, 2013While there will no longer be interference proceedings

available, the AIA still ensures that only actual inventors are eligible to file an application through derivation proceedings – which look to determine whether an earlier filing derived the invention from the later-filing actual inventor.

Key Changes First-Inventor-to-File Removal of Interference Proceedings Derivation Proceedings Grace Period Retained

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AIA: First-Inventor-to-File

35 U.S.C. § 100(i)(1)

The term “effective filing date” for a claimed invention in a patent or application for patent means:

(A) … the actual filing date of the patent or application for the patent containing a claim to the invention; or

(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority…

Priority Dates and Previous Filings

35 U.S.C. § 119 (a) A patent application filed by a foreign filer in US by

any person who has filed a patent application for the same invention in the filer’s own country will have the same privileges as an application originally filed in the United States if that country affords similar privileges to patent applications originally filed in the United States.

(e) A patent application filed for an invention disclosed in a previously filed provisional patent application shall have the same effect as if it was filed on the date of the provisional application. Section (e) also makes the ‘best mode’ disclosure requirement

optional instead of mandatory.

Grace Period

35 U.S.C. § 102(b)(1)A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention if:

(A): The disclosure was made by the inventor or joint inventor or

(B): The subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor.

Derivation Proceedings

35 U.S.C. § 135(a)

An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall

set forth with particularity the basis for finding that an inventor named in an earlier application derived the

claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.

Must Request Within 1 Year of PublicationUSPTO Director Decides to Institute

Comparing the AIA with Other First-to-File Systems

Europe: EPC Germany United Kingdom

Asia Korea Japan

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The German System

Section 6: If two or more persons made an invention independently of each other, the right shall belong to the person who is the first to file an application

with the Patent Office.

First to File Model System for Europe Competitive Edge

Limited Grace Period Art. 55 of the EPC: Six month grace period if:

(a): an evident abuse in relation to the applicant or his legal predecessor, or 

(b): the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition falling

within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972. 

The UK System

“The true and first inventor is not necessarily the first discoverer of the invention. If it had been discovered by another, but the discovery had never been divulged, he who independently discovers the same thing,

and is the first to disclose it or to apply for a patent, which is eventually granted, is the true and first inventor.” - Edmunds on Patents, 2ed, 1897.

“True and First Inventor” System Patent Rights Tied to Disclosure Patent Application Satisfies Disclosure

Same Day Applicants Proceed Independently EPC Part C, Chapter IV-24, Section 7.4:

“Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though

the other did not exist.”

Limited Grace Period Art. 55 EPC

The Japanese System

Article 39(1): “Where two or more patent applications relating to the same invention are filed on different dates,

only the first applicant may obtain a patent for the invention”

Japanese First-To-File System First Applicant Gets Rights Same Day Applicants Must Agree on Rights Examination on Request Only

6 Month Grace Period Limited Disclosure

The Korean System

Article 36(1) Where two or more applications relating to the same invention are filed on different dates, only the applicant filing the

application having the earlier filing date may obtain a patent for the invention.

First to File System Goal of Korean Patent Act: Promote Industrial

Advancement Later Filers Barred

Limited Grace Period Six months

Global Patent Law Harmonization

Main Areas of Disagreement

First to File

Prior Art Treatment

Prosecution/Litigation Differences

Grace Period

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