On March 16, the U.S. Department of Commerce’s Patent and Trademark Office (USPTO) enacted a new rule governing U.S. patents. This rule implements the first-inventor-to-file provision of the 2011 Leahy-Smith America Invents Act (AIA). According to the USPTO: “The provision, one of the hallmarks of the AIA, is a major step towards harmonization of the U.S. patent system with those of the United States’ major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents. The AIA also includes safeguards to ensure that only an original inventor or his assignee may be awarded a patent under the first-inventor-to-file system.”
To facilitate the implementation phase of the law, the USPTO has developed several videos, such as the one shown here.
But, not everyone is pleased with the first-to-file provision — especially its potential impact on small firms. As Ashby Jones reports for the Wall Street Journal: “The USPTO will give priority to those who file their applications first regardless of any independent evidence that another inventor may have actually come up with the idea earlier. The switch was made largely to harmonize U.S. law with the rest of the world, most of which follows versions of the ‘first-to-file’ system. The changes are likely to pose challenges to inventors working alone or inside smaller companies. Under ‘first-to-invent,’ these inventors could spend time with an idea before committing to a patent application. Now, ‘small companies will no longer have the time to assess the commercial value of an idea,’ said Thomas Mercolino, the chief executive of CertiRx Corp., a five-employee company based in Research Triangle Park, N.C. The firm makes authentication technologies for pharmaceuticals and other products. Alexander Poltorak, the CEO of General Patent Corp., which helps patent owners manage and license their intellectual property, said: ‘The law is a gift to big business. It’s going to result in a race to the patent office, and that’s a race that smaller inventors are typically going to lose.’”