Starting March 15, the US patent office is implementing major adjustments to the existing system of filing for patents. The system will no longer go by the “first-to-invent” rule that has existed since the patent office’s inception in 1790, but rather by a “first-to-file” rule that awards the patent to whoever manages to get their patent application in earliest.
These changes came about as a result of the 2011 America Invents Act and are designed to streamline the US patent system with the hope that it will reduce the ever-increasing stream of patent litigation. The majority of the world has used a first-to-file system for some time, so these changes also bring America’s patent system into alignment with the global community.
There is a great deal of speculation surrounding the potential effects of these changes, but a common belief is that patents will become easier to challenge and invalidate. There are several reasons for this, one of which is that the definition of prior art is broadening. It will encompass: any information available to the public, rather than just that known or used by others; sales or uses of a technology anywhere in the world, rather than just the United States; and international applications regardless of their original language of publication (previously international applications were only considered prior art if they were in English).
Another change that will make challenging patents easier is that inventors and their attorneys can challenge patents on the same grounds as they would in a federal court, but before the Patent Office’s Patent Trial and Appeal Board—so long as it is within nine months of the patent’s issuance. This would cost less than federal court litigation, reducing the barrier to attempting to invalidate existing patents.
Additionally, small inventors may be a casualty of these streamlined procedures because companies tend to have international interests and already file quickly regardless, and they also have teams of attorneys to advise them about the new rules and help them to get patents filed quickly. Without those resources, small inventors who create something first could get beaten to the patent office by larger competitors.
The real results of these changes won’t be seen for at least a year or two because of the length of time it takes for patents to be issued, but those with a stake in intellectual property and invention would do well to keep an eye on this development.