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.'”
After first hearing about this, I did not understand why some people were unhappy with the first come first serve mentality of the law. Though, after reading opinions from small business owners, I completely understand where they are coming from. Now, I too agree that this law is geared towards big businesses, and I wonder if those who created the law took into account the difficulties this would bring upon small business owners, or even single inventors. I am curious to see how much this law will effect people who are involved within smaller businesses as well as larger ones.
In some ways I find this law fair. First come first served is the easiest way to handle a lot of things. But on the other hand, it really is completely unfair to small businesses. Businesses that are just starting up do not have the upper hand compared to larger businesses. I think this is just lazy.
This law definitely is in the favor of big businesses. Small businesses will not even be able to compete with large businesses in “the race to the patent offices” and I think this law needs to be revised in order to be fair for everyone. The first come first serve rule is typically the most fair way to do things but small companies are getting screwed since they don’t have a sufficient amount of time to even come up with intellectual ideas. It will be interesting to see what happens with this because I think small businesses are not going to be happy in the long run.
As someone who is in “continual development” of a small startup, this is clearly a challenge for me, as an entrepreneur. It essentially makes my intellectual property my biggest liability. Without the ability to reinforce my eventual patent claim with evidence of years of research and data, I’m left to my resources at hand to fund both years of R&D as well as legal commitments to attempt to gain patent security. It reprioritizes the innovation procedure, making patenatability something that must be addressed at the beginning of the process, rather than afterward.
The first-inventor-to-file rule might not beneficial for the start-up company, but it protect the business for large company. Thus, overall, government get more profits with the rule although some start up company may not happy to accept the rule.