The race has begun: First-to-file under the America Invents Act is here

Inventors—if you are not practicing your sprint drills…you should be. The race to the Patent Office has begun and there is no ribbon for second place. Prior to March 16, 2013, the United States was a first-to-invent country. Although there could be exceptions to the rule, the date of invention in the United States was…

About the author: Ryan T. Grace is a co-founder of ADVENT, an intellectual property law firm in Omaha.


Inventors—if you are not practicing your sprint drills…you should be. The race to the Patent Office has begun and there is no ribbon for second place. Prior to March 16, 2013, the United States was a first-to-invent country. Although there could be exceptions to the rule, the date of invention in the United States was determined upon execution of a two-step process that included:

  1. Conception; and
  2. Reduction to practice.

Conception was the touchstone of inventorship and represented the completion of the “mental” part of invention. Conception was the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention. The reduction to practice step could either be an “actual” reduction to practice or a “constructive” reduction to practice. Actual reduction to practice required that the claimed invention worked for its intended purpose. Slightly different than an actual reduction to practice, constructive reduction to practice occurred upon the filing of a patent application on the claimed invention.

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If there was “diligence” between the date of conception and the reduction to practice (regardless of whether the reduction to practice was “actual” or “constructive”), the priority date of the invention in the patent application would flow back to the date of conception. Given that the inventor was diligent in the reduction to practice, the inventor would be granted protection as of the date of conception even if another person files a patent application constructively reducing the invention to practice before the inventor.

As an example illustrating the above-mentioned points, assume that Peter conceives of a new microwave container on January 1, 2013. Peter works diligently from January 1, 2013, until February 1, 2013, to prepare a patent application. Peter ultimately files his patent application on February 1, 2013. In such a situation, Peter constructively reduced his invention to practice on February 1, 2013. Further assume that Marie independently conceived of the same microwave container on January 15, 2013. Marie also diligently files a patent application. Yet, Marie files before Peter on January 28, 2013. Under our prior first-to-invent system, Peter would have been entitled to a patent on the microwave container because he conceived of the container before Marie and worked diligently to reduce it to practice by filing – even though he filed the patent application after Marie.

As the above indicates, our system prior to March 16, 2013, protected the true original inventor, unless the original inventor had suppressed the conception in some manner. Yet, when the first-to-file features of the America Invents Act became effective on March 16, 2013, this protection disappeared…. Now, inventors better sprint to the Patent Office.

The America Invents Act included many changes to our current patent system. One of the most controversial changes was the movement of the United States from a first-to-invent country to a first-to-file country. Succinctly stated, the Act indicates that a patent will be awarded to the first inventor to file on his or her conceived invention. Yet, the America Invents Act does not allow someone to steal or derive an invention from the true inventor and hurry up and file to win the race. The America Invents Act requires that the filing is by an inventor.

As an example, assume Peter conceives of the new microwave container on April 1, 2013. Peter works diligently from April 1, 2013, until May 1, 2013, to prepare a patent application. Peter ultimately files his patent application on May 1, 2013. Further assume that Marie independently conceived of the same microwave container on April 15, 2013, 15 days after Peter. Marie also diligently files a patent application. Yet, Marie files before Peter on April 28, 2013. Under the first-to-file system, Peter is out of luck. There is no ribbon for second place—Marie is entitled to a patent even though Peter conceived of the idea first.

To avoid the above trap of the America Invents Act, inventors should not sit on their ideas. Inventors should contact a patent attorney as soon as possible to make sure their ideas are being vetted for potential protection. Businesses and startups should also spend time educating their people to quickly identify potentially patentable subject matter. Businesses should also develop some quick procedures for vetting potentially protectable ideas. Also, a patent attorney can help inventors with patent filing strategies to help mitigate the effect of the change.
Along with the above potential business considerations, other business structuring strategies can be relevant depending on a company’s business model and technology arena. Such considerations and strategies ought to be vetted now, prior to innovation. Proactive strategies, as opposed to reactionary strategies, will save businesses time, money, and resources when the innovation has occurred.

 

Credits: Photos courtesy of Ryan T. Grace


About the Author: Ryan T. Grace is a co-founder of ADVENT – an intellectual property law firm in Omaha, Neb. Grace’s practice primarily relates to US and international patent strategy. He has prosecuted several hundred patents. Grace is a former adjunct professor of intellectual property law at Creighton Law School and he is an inventor on around twenty US and international patent applications.

Find more information on Ryan’s practice at linkedin.com/in/ryantgrace.

This story is part of the AIM Archive

This story is part of the AIM Institute Archive on Silicon Prairie News. AIM gifted SPN to the Nebraska Journalism Trust in January 2023. Learn more about SPN’s origin »

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