First to File

Patents for Today's Scientist and Engineer

M. Henry Heines

• Publisher: Wiley-AIChE
• Year: 2014
• ISBN:
  9781118933176
• Edition: 1
• Topic: Technology & Engineering
• Subtopic: Chemical & Biochemical Engineering
• Index: Technology & Engineering

Bridges the gap between the realistic needs and questions of scientists and engineers and the legal skills of professionals in the patent field at a level accessible to those with no legal training
•Written for inventors in lay terms that they can relate to or easily follow
•Lays out the new features of patent law introduced by the America Invents Act of 2012
•Explains the differences between the first-to-invent and first-to-file rules and why the two rules will coexist
•Focuses on the growth of new technologies in industry versus the laws protecting them

Chapter 1
The First-to-File Rule: Evolution and Application

Senator Patrick Leahy and Representative Lamar Smith, the Congressional sponsors of the America Invents Act (AIA), when considering the volume and intensity of the debate that preceded the signing of the Act into law in 2011, may have found it amusing, if it occurred to them at all, that the first U.S. patent examining body included among its three members the Secretary of War, Henry Knox.¹ While Mr. Knox, who has since come to be recognized as the father of American army artillery, possessed considerable war expertise, it is doubtful that this expertise was a factor in his being appointed to the Patent Board, and it is safe to say that patents have never been at the center of a military war. Nevertheless, patents have generated controversies at various times since their introduction into the United States, and possibly the most hotly debated controversy was the one over the proposal made 200 years after Mr. Knox assumed his duties as an examiner, that is, that patents be awarded on a “first-to-file” basis rather than the long-standing policy of “first-to-invent.” Those opposing the proposal argued that, among other perceived evils, it would reverse 200 years of precedent, and vigorous arguments both for and against the proposal were expressed not only by various interest groups within the United States but also between the United States and its allies. The proposal passed however, and it, together with the other provisions of the AIA, produced the greatest overall change in U.S. patent law in 60 years.²

The “first-to-invent” and now the “first-to-file” rules were devised to resolve priority disputes, that is, competing attempts to obtain patent coverage by different individuals or entities who have separately invented the same invention. Although these priority disputes could seemingly arise anywhere in the world and the U.S. patent system was not the world's first, the United States had to develop its own rule with little guidance from preexisting systems.

1.1 History of the First-to-File Rule in the United States

The patent system existing in England at the time that the empowering clause in the U.S. Constitution³ was written and the first U.S. patent law⁴ was enacted is commonly considered the basis for the U.S. law. The original English patents were privileges granted by the Crown under royal prerogative rather than property rights and were not rewards for ingenuity or discovery. In fact, the first patents were patents of importation, granted to individuals to reward them for introducing products and processes into the country from abroad. This was soon expanded to include patents of invention, that is, for innovations originating within the country itself, but it eventually became apparent that both these types of royal grants were more of a hindrance to domestic industry at large than an incentive for technological advance. As a result, Parliament enacted the Statute of Monopolies in 1621, which voided all patents, including patents of invention and importation as well as business licenses, except those for the “sole working or making of any manner of new manufacture within this realm, [granted] to the first and true inventor or inventors … [that was] not contrary to the law nor mischievous to the state by raising prices of commodities at home, or hurt of trade ….” While the wording of this exception would appear to be an explicit limitation to patents of invention and an institution of a first-to-invent policy, these were both subsequently obscured by the English courts in their interpretation of the expression “the first and true inventor or inventors” to include importers of products and processes that the importers had not themselves invented. Whatever the expression may have implied, however, no priority disputes were adjudicated in England between Parliament's enactment of the Statute of Monopolies and the U.S. Congress' enactment of its first Patent Act almost 170 years later. This left the United States with no precedent on how to resolve priority disputes other than the Statute of Monopolies itself, which was obscured by the legal system's loose interpretation of “the first and true inventor.”

Unlike England, the United States in the late eighteenth century was forced to confront the issue since it faced a situation not present in England. Whereas patents in England were granted by a central authority, that is, the Crown or its law officers, the American colonies lacked a central authority and were granting patents individually well before the Revolutionary War. Even though the colonies claimed to have received the authority to do so from their colonial charters, the colonies were not consistent in how they interpreted their patenting authority. Some colonies granted patents of invention and not importation, some granted patents of importation and not invention, some granted both, and some refused to grant any patents. The inconsistencies remained as the colonies became states, but were partially mitigated by the short-lived Articles of Confederation (1781). The Articles continued to recognize the power of individual states to grant patents, however, and defined infringement to include acts occurring within the granting state as well as the importation of infringing products from other states. As for priority among competing inventors, an inventor could clearly be the first to file in one state and the second in another, and yet an early filing in one state by a particular inventor could serve as evidence of that inventor's early invention. It soon became apparent that challenges to patent validity and enforcement among different states were awkward to reconcile and that patents were of no practical use unless they were equally enforceable in all states. Furthermore, the growth in interstate commerce and the need to develop domestic industry in competition with the importation of foreign goods soon took precedence over any interest in individual state patents. For these reasons, the value of rewarding the patent to the first to invent rather than the first to file was apparent.

Countries outside the United States likewise developed their patent systems individually, based on their own interests. Although the twentieth century saw the enactment of patent treaties between groups of countries for various reasons, the initial creation of most worldwide patent systems occurred without efforts of individual countries to band together. Economic competition between countries may in fact have caused individual countries to place a high value on early filing, both to introduce new technology into their countries at an early date by way of the descriptions in patents and to obtain early expiration dates for their patents to hasten the release of the new technologies to the public. This latter goal was achieved by setting the expiration date of a patent at a fixed number of years from the filing date, a policy that the United States did not adopt until 1995.

First-to-file thus became the general rule worldwide, with the United States being the sole exception. Why then did the United States hold out for so long? There is certainly no reason to expect that two (or more) individuals, with or without knowledge of each other's existence, were any more likely to come up with the same invention in the late twentieth century than they were in the eighteenth. Individuals in the late twentieth century were more likely to seek patent coverage, however, due to their recognition of the greatly increased economic power of patents, and the administrative complexities of determining the first to invent in priority disputes became ever more cumbersome and expensive both for the parties involved and for the Patent and Trademark Office (PTO). Most significantly, however, growth in the global economy and international trade placed the United States under pressure to reconsider its adherence to the first-to-invent rule, since the adverse effects of this growth included an increasing trade deficit in the United States as well as the piracy of American products by manufacturers in third world countries. The resulting damage to U.S. companies and the U.S. economy in general has prompted the United States to try to enforce its intellectual property more aggressively, as evidenced by an increase in U.S. inventors applying for patents abroad and a desire for U.S. patents to have a more global impact. International treaties are an effective means of promoting these goals, by harmonizing standards of patentability, coordinating procedures for applying for patent protection in multiple countries, and simplifying the means of enforcing patents across international boundaries. Both Congress and American industry have recognized the potential benefits of these goals, and the United States has entered into such treaties, including the General Agreement on Tariffs and Trade,⁵ the Trade-Related Aspects of Intellectual Property,⁶ the World Trade Organization,⁷ and the World Intellectual Property Organization.⁸ Nevertheless, full participation of the United States in seeking global harmonization has been hindered by the U.S. adherence to the first-to-invent rule. The AIA and its institution of the first-to-file rule thus remove this obstacle.

The controversy that preceded enactment of the change by the AIA reflects the profundity of the change relative to other features of U.S. patent law, as evidenced not least by the complex set of official regulations and procedures implementing the first-to-file rule and the fact that the expertise needed to navigate these regulations has created its own subspecialty among patent attorneys. One argument against the first-to-file rule was that it is unconstitutional, based on an interpretation of use of the word “inventors” in the empowering clause⁹ of the Constitution to mean “true inventors” and therefore “first inventors.” Another is that the rule unfairly benefits large, well-funded corporations over individual inventors, start-ups, and nonprofit entities such as universities and research institutions, the large corporations presumably being better able to fund multiple and early patent filings. The constitutionality argument has been less than fully compelling, however, since the later of two inventors can still be a “true” inventor, and the Constitution does not state otherwise, and the empowering clause expressly states that the purpose for empowering Congress to enact patent laws is “[t]o promote the Progress of Science and useful Arts” and therefore to provide an incentive for inventors to promptly file their patent applications so that the public can obtain the greatest benefit from the information contained in the patents. As for the perceived unfairness to individuals, small businesses, universities, and research institutions, this is partially mitigated by the fee discounts that the PTO offers for “small entities” and “micro entities,” as well as administrative procedures introduced by the AIA that provide faster, cheaper, and more streamlined means of challenging patents and adjudicating patent disputes, all of which can benefit applicants who are less well funded. Ultimately, the fact that the United States has been the sole holdout among patent-granting countries of the world by adhering to the first-to-invent system, combined with the United States' global economic considerations, is most responsible for instituting the change.

1.2 “Who's on First?”: The Rule and Its Application

The first-to-file rule applies to competing inventors who file patent applications, not simply to competing filers (i.e., applicants). Any individual can file a patent application on another's invention by substituting the filer's name for that of the true inventor, whether for unscrupulous reasons or because of a lack of understanding of the law. The law requires that the true inventor be named when submitting the application, and a failure to do so, for whatever reason, is grounds for an examiner to reject an application or for a court to declare a patent invalid. Competing inventors, however, do not risk rejection or invalidation simply because of the competition, provided that each is a true inventor. They do however confront each other in a priority dispute that is resolved in favor of the first among them to file.

The act of invention, under either the first-to-invent rule or the first-to-file rule, is generally the conception of an idea followed by the reduction of the idea to practice. For certain inventions, the reduction to practice is a routine matter involving no creative input or other contribution to the conception once the conception is made, and some inventions lack an actual reduction to practice and instead are sufficiently well thought out to allow the direct filing of ...

Table of contents

• Cover
• Title page
• Copyright page
• List of Figures
• List of Tables
• Preface
• Introduction
• About the Author
• Chapter 1: The First-to-File Rule
• Chapter 2: Prior Art before and after the AIA
• Chapter 3: Creating One's Own Prior Art
• Chapter 4: Canceling Prior Art and Other Benefits of Record Keeping
• Chapter 5: Inventing in an Employment Environment
• Chapter 6: The Novelty Threshold
• Chapter 7: Confronting the Prior Art
• Chapter 8: The View from the Infringer's Side
• Chapter 9: Patent Eligibility
• Chapter 10: Selected Topics in Patent Strategy
• Chapter 11: Patents and Beyond
• Appendix A: Selected Fees Charged by U.S. Patent and Trademark Office and Other U.S. Agencies for Intellectual Property as of January 1, 2014
• Appendix B: Patent Searchers
• Acronym Glossary
• Glossary
• Bibliography, Websites, and Blogs
• Patents and Published Patent Applications Cited
• Cases Cited
• Index
• End User License Agreement