First inventor to file

Additionally, file before selling your invention. Resist the temptation to share your still-forming ideas with the world. What was OK to do last year is not OK to do this year.

To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. The Constitution grants Congress the power to secure exclusive rights, i. The inventor is, by definition, the one who invented first. An inventor can hardly be defined as the one who is first to file a patent application. Replacing the first inventor with the first filer, as proposed in the Reform Act of , may not be exactly what the Framers of the Constitution had in mind.

Other countries which have First-to-File systems do not have this problem because their patent laws are not rooted in their respective constitutions. It is instructive that the copyright, another form of intellectual property protection stemming from the same clause in the Constitution, vests with its owner as soon as the creative idea is fixed in a tangible form, not when the copyright is registered. Under our patent system, an inventor has sufficient time to perform a thorough search of prior art to determine if the invention is patentable.

Having sufficient time to prepare a patent application has positive effect on the quality of the filed application and the breadth of disclosure. Recent research demonstrated that patentees in "First-to-file" countries lag far behind US patentees in patent disclosure breadth.

The study shows that US patents have significantly higher page count indicating breadth of disclosure and claim count indicating breadth of protection than patents originating from the countries with a First-to-File regimei. Although our system does not require the actual reduction to practice i.

This results in a better patent application and a fuller disclosure. US patent law also requires disclosure of the "best mode," i. Needless to say, building a prototype or otherwise further developing the invention allows the inventor to experiment with and contemplate upon the best way to practice the invention, thus leading to a meaningful best mode disclosure1. An inventor who has written a novel idea in her notebook is not concerned about discussing her idea with others because she has a record of the conceived idea - the evidence is in her notebook even if someone copies the idea and files the application first.

Under a First-to-File regime, inventors would be justifiably hesitant to discuss their ideas with others for fear of being beat in the race to the patent office. This could stifle development of an invention that might have benefited from the cross-pollination of ideas. Such concerns may slow down research and development collaboration, and the exchange of ideas vital to technological progress.

A First-to-File system, however, necessarily leads to a race to the patent office, which leads to half-baked patent applications. Such a system clearly discourages inventors from taking the time to build a working prototype.

Moreover, it is hard to imagine how an inventor could disclose the best mode if never given the chance to practice it!

In countries where disclosure of best mode is not a requirement, this is not a problem. In the US, however, best mode disclosure is required.

Another unique feature of the American patent system is the "Grace Period. Under the First-to-Invent regime, there is no necessity for the inventor to rush a patent application to the Patent Office.

The inventor can take his time to figure out a marketing plan and business model, and decided whether or not it is prudent to invest in preparing and prosecuting a patent application. Although a proposed change to First-to-File regime does not eliminate the Grace Period, as a practical matter, such regimes would set off a race to the Patent Office, any grace period notwithstanding.

A First-to-Invent system, therefore, is very important to small businesses and independent inventors who need to take their financial resources into consideration. Under the First-to-File regime, large corporations with well-established invention disclosure procedures, patent committees and armies of in-house attorneys will always beat a lone inventor in the race to the Patent Office, thus placing small and independent inventors at a severe disadvantage.

Universities derive significant income from technology transfer and patent licensing. However, academic realities put different pressures on university professors and researchers. Operating under the academic mantra "publish or perish," scientists are more concerned with presenting their results at conferences and publishing them in peer-reviewed journals.

After all, their academic career depends upon it. Patenting the results is usually an afterthought. Under our current First-to-Invent regime, there is no necessity for a researcher to rush a patent application to the Patent Office. Moreover, it stresses upon the factors on how to deal with the First Inventor to File patent system.

For this, we need to know three basic components of the patent law. They are as follows:. This deals with the construction of a tangible form of the conception which can display the efficacy of the invention.

However, the inventor has to abide by other rules and regulations. Two individual inventors may file an application for the same invention. The person gets the ownership, who has filed application first rather than who conceived the idea first. The aforementioned system ignores the conception date. The Office takes previously filed applications or disclosures into consideration before granting of a patent under this system. A secret prior-art is an invention which nobody has filed patent application for.

Let us understand how one can deal smoothly with this patent system transition. Accordingly, you need to construct and execute your patent strategy.