‘First to File’ Patent System Replaces ‘First to Invent’

The change in United States patent laws that went into effect on March 16 of this year is intended to better align the U.S. with all other industrialized countries, in that all countries now utilize a “first to file” standard as opposed to “first to invent” when determining who has priority to an invention. Previously, if a company could show it was, in fact, the first to invent the item, that carried more weight than the date on the patent application. The new system, however, turns this around, putting a greater push on companies to both expedite their internal R&D processes and monitor their competitors’ activity.

Gavin J. Milczarek-Desai, Ph.D., co-managing partner of Quarles & Brady’s Tucson office and a registered patent attorney, suggests businesses address this change by expediting internal processes for disclosing and reviewing inventions and for making decisions about which inventions have merit for filing a patent application.

Another strategy Dr. Milczarek-Desai describes is defensive early publication “if a company is not interested in a patent; maybe the item will last only a few years, too short to go through the time and expense of the patent process.” Patents are awarded to a device, product, composition of matter, method, or article of manufacture if it is new and not obvious, he explains, and by getting the item into the public domain, a company circumvents a competitor presenting it as something new.

He also notes the importance of monitoring competitors’ published patent applications and patents. “There will be an ability to challenge, and the earlier you do it, the cheaper and more effective [that challenge] will be.”