#9: First to File System

The patent system used to work on a first-to-invent basis. That system has been used for the last 200 years. This means that when 2 people file for the same patent the patent office should identify and reward the patent to the inventor who was the first to come up with the invention even if they were not the first to file the patent application.

Today the first-to-file/first-to-disclose system is being implemented which will basically de-emphasize the invention date. Many argue that this will be an issue as patent trolls may have to opportunity to file patent applications on inventions that have not yet been filed by small start ups. However, according to this article an inventor can post their idea on a site or blog and then still file that application within one year of public disclosure. This is where the American patent filing system differentiates itself from the rest of the world. In other countries, once an idea is disclosed you cannot get a patent for that idea or invention.

In order to successfully adjust to this new system, companies need to act quickly. Implementing a process to quickly identify inventions is key. If a company does not have enough funding to file an actual patent application, a carefully prepared provisional application should be filed to ensure that the invention is disclosed in a legal way.

If the technology is worthy of patent protection, filing a series of low-cost provisional applications during the course of development of the technology can be a cost-effective way to establish a series of early “first-to-file” filing dates for the technology.
On the other hand, if it is decided that an invention is not worth immediately filing a patent application for, publicly disclosing the invention should prevent others from receiving patents on the same technology. But the decision to publicly disclose an invention before filing a patent application should not be taken lightly. Public disclosure prior to filing a patent application will likely cause foreign patent rights to be forfeited. In the case of software, which is not patentable in most foreign patent systems, this is not a problem. Therefore, disclosures for software-based inventions can be an ideal way to create prior art for others without the trade-off of forfeiting any patent rights that a company would otherwise be entitled to.