The America Invents Act (AIA) moved the United States Patent Office from a “first to invent” system to a “first to file” system. Prior to the implementation of the AIA, the first to invent system was based on equity, or fairness. An issue occurs if inventor A filed a patent application after inventor B. If the subject matter overlaps, and inventor A was actually the first to invent the subject matter, the pre-AIA patent laws allowed inventor A a path to prevail. During patent prosecution, inventor A could file an antedating affidavit that would potentially disqualify the competing application of inventor B as prior art. In certain instances, an Interference proceeding might be declared. After the AIA, inventor B would prevail. Inventor A was just too slow to file.
Bottom line, the first to file patent rule is less forgiving than the first to invent patent system. Any delay in filing a patent application could potentially hurt an applicant. Even if the patent application was in a state that was “ready to file”, without an actual filing, any application is vulnerable to a competitor's earlier filing. Sound complicated? It is. This is where a good patent attorney can help make your life easier.
So anyhow, does this mean that someone can misappropriate your invention, quickly file with the Patent Office, and ultimately get away with the theft? Not really. There are still provisions to address actual fraud (e.g., a derivation proceeding, an inventorship challenge, etc.). The first-to-file patent system in the U.S. is concerned with competing applications and inventors that have no knowledge of each other. Patent lawyers are well aware of this.
Why did the U.S. move from a system based on fairness, to a system based on unforgiving mechanical filing rules? It is just easier to administer. Most foreign countries are on a first to file system. The U.S. patent office has moved from a system of fairness, to a system of convenience. Whether you agree with this move or not, inventors should be aware of the potential consequences of delays in filing. When implementing a day to day strategy, authorizing your attorney to file an application at the end of a week, say on Thursday or Friday, picks up quite a few days compared with waiting until Monday to authorize the filing.
Book an appointment to discuss your Patent issues with one of our Patent Attorneys - Macomb County MI.If you would like us to analyze your particular situation, call us to set up an appointment to discuss starting an engagement. Please do not send confidential information prior to negotiating an engagement.