What does “first inventor to file” mean?

11.02.15

As a rule of thumb, United States patent applications filed after March 16, 2013 are subject to a rule commonly referred to as ​“first inventor to file.” Before this date, the United States operated on what was commonly referred to as a ​“first to invent” rule. Because this provision was changed as part of the America Invents Act, this is sometimes referred to as the ​“pre-AIA” rule. So what’s the difference?

Here’s a key part of the old rule (pre-AIA 35 U.S.C. section 102):

A person shall be entitled to a patent unless: (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent

Here’s a key part of the new rule (35 U.S.C. section 102(a)):

A person shall be entitled to a patent unless – (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention

In other words, pre-AIA rules looked at the date of invention and now the rule looks to the effective filing date. For example, under the old rule, Inventor A may have invented a widget in her basement on January 15. Inventor B may have invented the same widget in his basement on February 1 of the same year. If inventor B filed a patent application on February 2, under the pre-AIA rule inventor A could say ​“wait! I invented that first!” and inventor A might win. After March 16, 2013, inventor B might win.

The ​“first inventor to file” rule is subject to a number of limitations. As one example, the person who files still must be an ​“inventor” — meaning if Inventor B found out about the widget from Inventor A and tried to take credit for the invention, Inventor B would not be able to obtain the patent.

Other exceptions may apply to this rule — when in doubt, ask a registered patent practitioner.

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