What is the first-to-file patent system?
US patent laws no longer recognize who was first to invent, but rather who applied first for a patent. It’s basically a race to the USPTO and whoever files first wins the right to apply for a patent on their invention. The one who is first to file a patent application will have advantages.
To be clear, first-to-file does not mean that whoever files first will certainly get a patent. It does mean that between two or more inventors who separately file for similar inventions, the one who files first will have the right with respect to later filers to pursue their patent. It could also mean that the earlier filed application may be used as prior art against subsequent applicants.
Starting strong: How to secure an earlier filing date
If you are short on cash and time, one way to reserve your patent rights under the first-to-file patent rule is to file a provisional patent application as soon as possible.
In fact, it’s preferable to file before publicly disclosing the invention. That way, you accomplish two objectives:
- You secure an earlier priority date before a third party attempts to file for a similar invention after seeing yours; and
- You reserve the right to file foreign patent applications.
If your patent attorney has already started working on a non-provisional application, another option is to file an early draft of the non-provisional application, however imperfect. You can follow up with a continuing application to make corrections. Even if you add new subject matter in a CIP which would get a later filing date, you are no worse off – at least you will have obtained an earlier priority date for the content included in your earlier-filed non-provisional application.
How to lose the first-to-file patent race to the Patent Office
Obviously, one way to lose the race is to file after someone has already filed for a similar invention. This can happen by making a public disclosure of your invention prior to filing a patent application. If you’ve already shown your invention to others, you ought to consider filing a patent application promptly assuming you’re within the one-year grace period from your earliest date of public disclosure.
1-year Grace Period for Inventor’s Own Public Disclosure
Of course, what’s worse than a weak start is simply not starting at all. Moreover, if you’ve publicly disclosed your invention, then you have only a one-year grace period to apply for a patent. You forfeit your patent rights if you fail to file within the 1-year grace period.
Strong start, weak finish
You can lose the race even though you started strong with an early priority date. One common way to lose is failing to convert a provisional to a non-provisional within the 1-year timeframe.
Even with a promptly filed provisional, it’s possible to lose the race by procrastinating the filing of the non-provisional (i.e., waiting until the last minute to file the non-provisional within the 1-year deadline). This can occur when new subject matter needs to be added to the non-provisional. By delaying the addition of the new content, the new features get a later priority date.
Finishing strong: Where is the finish line?
If we’re talking about utility patents, then the finish line to the first-to-file race is not necessarily the grant of a utility patent, but the filing of a non-provisional application. I say this because a provisional application is merely a placeholder. Its value is temporal and fleeting unless an applicant follows through with filing a timely non-provisional application.
This is why it’s important to convert provisionals into non-provisionals even if the final product is not ready for launch. You can always add further features by filing a continuing application, but you won’t be able to save your earliest priority date of the provisional if you fail to file the non-provisional.