First to file and first to invent

First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first to file system is used in the majority of countries, with the notable exception of the United States, which operates a first to invent system. [ Jane K. Winn, Benjamin Wright, "The Law of Electronic Commerce", Aspen Publishers Online 2000, 2006-2 Supplement, p. 10-6, ISBN 0735516480]

First to file

In a first to file system, the right to the grant of a patent for a given invention lies with the first person to file a patent application for protection of that invention, regardless of the date of actual invention.

First to invent

The United States uses a "first-to-invent" system, unlike most other countries in the world. Invention in the U.S. is generally defined to comprise two steps: (1) conception of the invention and (2) reduction to practice of the invention. When an inventor conceives of an invention and "diligently" reduces the invention to practice (by filing a patent application, by practicing the invention, etc), the inventor's date of invention will be the date of conception. Thus, provided an inventor is diligent in reducing an application to practice, he or she will be the first inventor and the inventor entitled to a patent, even if another files a patent application (reduces the invention to practice) before the inventor. [ [http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2138_05.htm 2138.05 "Reduction to Practice" [R-5 - 2100 Patentability ] ] However, the first applicant to file has the "prima facie" right to the grant of a patent. Should a second patent application be filed for the same invention, the second applicant can institute interference proceedings to determine who was the first inventor (as discussed in the preceding paragraph) and thereby who is entitled to the grant of a patent. This can be an expensive and time-consuming process.

Example

Assume Tom conceives of a new mousetrap on January 1, 2006. Tom works diligently from January 1, 2006, to February 1, 2006, to prepare a patent application, and Tom files his patent application on February 1, 2006. Thus, Tom reduced his invention to practice on February 1, 2006. Assume Jerry conceives of the same mousetrap on January 10, 2006, and diligently files a patent application on the new mousetrap on January 20, 2006. Tom is entitled to the patent on the mousetrap, because he conceived of the mousetrap before Jerry and still worked diligently to reduce it to practice. [ [http://www.uspto.gov/web/offices/pac/mpep/documents/0700_715_07.htm#sect715.07 715.07 Facts and Documentary Evidence [R-3 - 700 Examination of Applications ] ] . The USPTO would institute an interference proceeding between Tom and Jerry to review evidence of conception and diligence.

As a further extension of this example, assume Tweety conceived of the same mousetrap on December 31, 1990. Tweety never told anyone about the mousetrap and did not work on reducing the mousetrap to practice for many years due to financial reasons. Tweety finally reduces the mousetrap to practice on February 15, 2006. Tweety did not diligently work to reduce the invention to practice, so she is not entitled to a patent over Tom or Jerry. [ [http://www.uspto.gov/web/offices/pac/mpep/documents/0700_715_07_a.htm#sect715.07a 715.07(a) Diligence - 700 Examination of Applications ] ] This is one of many reasons why patent attorneys advise clients to file patent applications as soon as possible.

See also

* List of patent legal concepts
* Submarine patent
* Inventor's notebook

References

* [http://www.torys.com/Publications/Documents/Publication%20PDFs/ARTech-19T.pdf From First-to-Invent to First-to-File: The Canadian Experience] , Robin Coster, American Intellectual Property Law Association, April 2002.
* [http://www.oblon.com/Pub/GholzFirsttoFile.html First-to-file or First-to-invent?] , Charles L. Gholz, "Journal of the Patent and Trademark Office Society", 82 JPTOS 891, December 2000.
* [http://www.inventions.org/resources/advisory/first.html First to Invent vs. First to File] , Inventors Assistance League. Advocates first-to-invent.
* [http://www.inventionconvention.com/inventorsvoice/report/ 1992 Special Summary Report; The Great Debate; First-to-invent vs. First-to-file and the International Harmonization Treaty] , Stephen Gnass/Inventors Voice. Advocates first-to-invent as more friendly to the individual inventor.