First-to-Invent vs. First-to-File and Other Patent Issues
—
Where Do You Stand?
by
Mauro Togneri
In the global
economy, U.S. inventors' innovation may be the most important asset affecting
U.S.
competitiveness. Patents issued by the United States Patent and
Trademark Office (USPTO) are the primary protection inventors can
employ to derive compensation from their inventions, and are therefore
a primary driver of innovation. A significant portion of U.S. IEEE members
are part of the inventor population, and are affected by
any change in patent laws.
In the past, patent protection was primarily a U.S. issue, but as markets go global
and Europe and Asia become bigger global players, it is vital that U.S.
inventions enjoy worldwide protection.
Worldwide patent
protection has not been a major problem for large, multinational
companies with deep pockets and their own teams of lawyers. But
for many small businesses, independent inventors and
entrepreneurs, the costs and complexities associated with
complying with a multitude of different requirements and fees
for multiple
countries can present significant hurdles to securing offshore
patent protection.
The U.S. government
has taken steps to make the protection process simpler and less expensive
for all U.S. inventors by participating in the World
Intellectual Property Organization and in the General Agreement
on Tariffs and Trade (GATT) treaty for Trade-Related Aspects of
Intellectual Property Rights. The government also promotes uniformity in patent laws and
processes with developed and developing countries through
bilateral treaties. The hope is
that patents issued in the United States can be granted easily
and inexpensively in other countries that represent a large
share of the world market. The process of granting patents with
more consistency across many countries in commonly referred to
as “harmonization.”
Harmonization
efforts have been underway for many years and, as in any
quid-pro-quo negotiations, U.S. patent laws have been modified
to better synch with patent laws in Europe and Asia. IEEE-USA's Intellectual
Property Committee has monitored and, at times, advocated public
policy changes to maintain the protection for U.S. corporate inventors,
as well as individual inventors and entrepreneurs. Currently,
harmonization efforts are part of an overall drive to change
—
and hopefully improve —
the patent process.
This latest renovation
of the nation's patent laws is far more fundamental than prior
modifications, which included changes to publishing foreign bound
applications and annuities for issued patents. In the interest
of harmonization, this time several
basic features of the U.S. patent system stand to be eliminated. Two of those changes
could have a major impact on how intellectual property is
protected by the U.S. patent system, particularly for the
individual inventor who doesn't command the resources of a large
multinational corporation. The changes under consideration
relate to First-to-Invent and
Publication.
First-to-Invent
vs. First-to-File
The current patent
law system observes the First-to-Invent rule, meaning
that the inventor who first invented an innovation, not the
first to file for a patent on that innovation, is granted the
patent protection. The proposed change is to move to
a First-to-File rule to harmonize our rules with those of Europe and
Asian countries.
Some of the
advantages of First-to-Invent are:
-
An inventor
who can demonstrate priority with dated and witnessed lab
notes, disclosures, etc., and can diligently reduce it to practice
will be able to patent an invention, even if someone else has
already filed claiming that invention.
The advantages of
First-to-File are:
-
Because of the
Provisional Application, which may be relatively quickly and
inexpensively prepared by the inventor, the large costs
associated with interferences that determine who is the
first to invent may be eliminated.
To Publish or Not
to Publish...
Currently, the USPTO publishes inventions 18 months after filing, like
its European
and Asian counterparts. In the United States, an inventor
can prevent publication by providing a statement that the
invention will not be patented outside the United States. The
penalty for violating the restriction can void the patent. The
proposed change would eliminate the choice and publish all
patent applications 18 months after filing.
The advantages of
publishing are:
The disadvantages of
publishing are:
-
Even if only in the United States, until the
patent issues, and even with a limited term of 20 years from
the date of first filing, the secrecy of the filing permits inventors to have a
greater discretion of when and with whom they will
approach to license or litigate, or whether to do so with an issued
patent. There is less chance that the patent will stall
during prosecution when it is of no current economic value.
IEEE-USA's
Intellectual Property Committee efforts are directed to
protecting U.S. inventors’ interests, especially those of the
IEEE's U.S.
members. However, large multinational corporations generally
have resources that can be deployed to cope with proposed or
implemented changes in patent law. The committee tries to
anticipate the needs of its members. For example, the committee
was instrumental in crafting legislation that allows inventors
to retain some control over the choice to
publish or not by selecting whether to apply for the patent
domestically or internationally.
The Intellectual Property Committee is interested in your opinion
regarding these proposed changes. While the Committee supports
harmonization in principle, it believes that a substantially
negative impact on U.S. inventors’ ability to successfully
deploy intellectual property will adversely affect the inventors
who are U.S. IEEE members, and could ultimately hinder the nation's ability to compete worldwide.
