Maiorana, P.C.

Patent Law - Established 1998

Does the First to File System Let Someone Else Apply for a Patent Based on My Invention?


The patent statutes related to inventor declarations would prevent this type of situation. Before a patent issues, each listed inventor signs a declaration clearly stating that they are the inventors. The language specifically says “I believe that I am the original inventor or an original joint inventor of a claimed invention in the application”. There is also a statement that “any willful false statement made in this declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both”. That’s part of the First to File Law.

If someone went ahead and filed anyway, the inventorship could be challenged. This could be done at the U.S. Patent Office level, or in the defense during a litigation. At the U.S. Patent Office level, there are provisions in the AIA to file an information disclosure statement (IDS) by third parties. An IDS could be used to put the U.S. Patent Office (or USPTO) on notice. If a patent has already issued, a post-grant review would be an option. If there is a competing application on file by the true inventor, a derivation proceeding would be appropriate. [1] We can really help with that being the Best Patent Attorney in Macomb County

Another interesting situation would be if Company B attended a seminar presented by Company A. Then Company A discloses a possible invention. Company B could not properly file based on the inventorship declaration requirements discussed above. But what if Company B did not file patents that directly covered Company A’s disclosure, but rather made an improvement over the Company A material? Company B could possibly receive a valid patent. To do this by the book, Company B would file documents from Company A’s disclosure in an information disclosure statement. If the U.S. Patent Office approves Company B’s claims, and there was an IDS considered, this would be acceptable. Company A may be upset, but that would probably be acceptable.
[1] A derivation proceeding applies to patent applicaitons filed after the America Invents Act (AIA). Prior to the AIA, a Patent Interference would be the appropriate procedure.
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  • Chris Maiorana
  • July 2016
Tags: Best Patent Attorney Macomb County, Intellectual Property Lawyer San Francisco South Bay, First to File Patent Rule, First to File Law, U.S. Patent Office

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