The Need for Speed (and Grace): Issues in a First-Inventor-to-File World
Generally speaking, a patent gives its owner the right to exclude others from making using selling, offering to sell, or importing the invention during the term of the patent. If, however, two or more inventors come up with the same invention and file for a patent, the system needs a way to determine who gets the patent, since only one patent will issue per invention. The United States currently stands alone in awarding the patent to the inventor who can establish the earliest invention date (first to invent or "FTI"). All other countries award the patent to the inventor who wins the race to the patent office and files an application covering the invention first (first inventor to file or "FITF"). Pending patent reform legislation includes a provision that would move the United States to a FITF system.
Some argue that the U.S. already has a defacto FITF system because in disputes regarding priority of invention, the first filer normally wins. Also, U.S. inventors who file for patent protection in other countries already have been operating in these FITF systems and have conformed their practices to this reality.
Much has been written on the topic of a U.S. move from FTI to FITF and its benefits for global patent harmonization, certainty, and efficiency. However, this paper is being written in conjunction with a symposium on intellectual property and entrepreneurship and in it, I explore potential impacts of a change from FTI to FITF on small entities in the U.S., a class of inventors that includes many entrepreneurs, particularly academic researchers. I believe there are valid arguments for and against each approach, some of which I delineate in the paper. However, my concern is less on the merits of "whether" the U.S. should switch to FITF and more on "when" and under what circumstances the change should happen to be most beneficial to small entity inventors in the U.S. and beyond.