First to invent

The first to invent policy is a controversial patent law doctrine only used in the United States. Based on this policy, under certain circumstances, inventor A who made the invention earlier than inventor B, deserves to be awarded a patent even if B filed the patent application to the United States Patent and Trademark Office (USPTO) earlier.

Background

In the U.S., most inventors do not encounter first to invent problems. The U.S. patent law system usually works exactly as the same as the rest of the world. The first to invent doctrine is only applicable with:

1. two pending applications, or
2. one pending application and a patent issued within a year of the pending application's filing date.

If the earlier inventor failed to notice other inventor's issued patent or patent application on time, he/she can not claim to be the first inventor. Nor can he/she claim so-called "prior use right" as a legal defense in a patent infringement lawsuit unless the subjected patent is a business method patent. The earlier inventor can do nothing but to request for a license and pay some money or stop using that patent.

It is usually hopeless for a copycat to forge evidence of first invention to hijack an issued patent or publicized patent application.

Economical analysis

In many less profitable areas, only a handful of inventions are so valuable to justify expensive lawsuits. The patentee may not have the money to monitor all competitors in the whole U.S. Therefore, the real first inventor may not feel any legal threat.

In those highly lucrative areas, most patents are still left unused or not profitable. They were created to please investors or used to deter possible competitors. Even if the first to invent doctrine is applicable, the first inventor may not want to waste money and time in a pointless litigation.

Therefore, the first to invent doctrine is not very different from the first to file in practice. However, there are still some cases it will be used. In the early 1960s, about 1,000 such interference proceedings had taken place each year. The numbers of interference proceedings are getting fewer and fewer year by year. Since the late 1990s, it became less than 200 cases each year despite of the so-called "patent explosion". Only in about 60 cases a year where the challenger are determined to have been the first inventor. This is rarely a very good business except for a small band of very specialized patent lawyers.

By its very nature, first to invent system is not feasible in countries where the market is too small to justify expensive litigations. It also burdens inventors because they may want to preserve evidence of their earlier invention in advance. That is why first to file doctrine is the mainstream doctrine today.

See also

• First to file
• Submarine patent
• Inventor's notebook
• Interference proceeding