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What does “first inventor to file” mean?

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.

DISCLAIMER: The information provided is for general informational purposes only. This post is not updated to account for changes in the law and should not be considered tax or legal advice. This article is not intended to create an attorney-client relationship. You should consult with legal and/or financial advisors for legal and tax advice tailored to your specific circumstances.

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