How the First-to-File Rule Legally Affects Patent Applications

An inventor who wants to protect their invention in the U.S. needs to get a patent from the U.S. Patent and Trademark Office (USPTO). One of the main patent rights is the right to prevent someone else from getting a patent for the same invention. In many industries, innovation proceeds along parallel lines, so multiple inventors may develop the same invention at approximately the same time. This can create a race to the patent office.

While the inventor who first created the invention historically received priority in the U.S. system, the America Invents Act changed this rule in 2013. Now, the applicant who first files their patent application receives priority. (There may be exceptions in some cases involving patents with multiple claims or foreign patent registration dates.) This system brings the U.S. into accordance with most foreign patent systems. As a result, an inventor no longer can get a patent in the U.S. on the basis that they invented a product or process before anyone else did.

Impact on Inventors

An inventor should try to file their application with the USPTO as soon as they have determined that their invention is eligible for a patent. The main way to establish their rights efficiently is to file a provisional patent application. This is a streamlined version of the regular patent application that can be filed more cheaply and quickly. If an inventor succeeds in getting a provisional patent, they will get patent pending status for the invention. This may place them in a stronger position for negotiating with potential customers.

Many patent scholars fear that the first-to-file rule undermines fairness and equality in patent law. They argue that it places inventors with fewer resources at a disadvantage. It may favor corporate applicants over individuals, and it may favor applicants who are represented by attorneys over applicants who choose to file on their own. A race to the patent office also may discourage inventors from taking the time to develop their invention to make it as useful as possible.

Certain entities build their business on buying patents and bringing infringement actions against other entities, without ever putting the patents that they own to a productive use. These entities are popularly known as “patent trolls.” The first-to-file rule may benefit them through its emphasis on the formalities of the filing process, although this remains uncertain.

Justifications for the First-to-File Rule

The first-to-file rule is much simpler and easier to administer than the first-to-invent system. If multiple inventors argued that they had priority for a patent, the USPTO needed to hold a separate hearing for each inventor, at which they would explain when they created and developed the invention. (In legal terms, they needed to prove that they had “reduced it to practice” before their competition did.) Determining which inventor held priority could be challenging even after a hearing.

Another reason to adopt the first-to-file rule was to harmonize the U.S. system with international patent systems. Many companies in the U.S. conduct business around the world and would benefit from a more uniform system.

Last reviewed October 2024