We continue in our series of snap-shots of changes to US patent law, as a result of The Leahy-Smith America Invents Act, recently signed by President Obama. We now take a closer look at the change in the US patent system from a ‘‘first-to-invent’ system to a ‘first-to-file’ system, similar to that in most other countries.

Background – First-to-invent

Currently, the US has a ‘first-to-invent’ system. Where two or more separate applications filed by separate parties are directed to, and compete for the same invention, the first to invent is entitled to the patent, even if their application was filed after the other person’s patent application. As a result, it is important for inventors to keep and preserve evidence of the date of conception and other details relating to their invention, such as dated and well documented notebooks.

New system – First-to-file

The US will soon change to the first-to-file system which awards the patent to the first inventor to file. As a consequence, the first person to file an application (or related priority application) is entitled to the patent for the invention, and the date of conception is not a consideration. Where competing parties have independently invented and filed patent applications, this generally simplifies determining which party is entitled to a patent for the invention, as filing dates are easy to ascertain.

The introduction of this system will abolish ‘interference proceedings’ as the issue of determining the ‘first inventor’ for competing patents no longer applies.

However ‘derivation proceedings’ will be available to address situations where a person derives an invention from the actual inventor, and files a patent application for the invention without the authorisation of the actual inventor.

How it affects you

For Australian applicants familiar with the first-to-file system in Australia, harmonisation of the US to the first-to-file system brings simplicity and certainty when considering entitlement of competing applications. Australian businesses will be able to rely on the priority date of their first Australian application to support their US application against competing applications in the new first-to-file system. Further, Australian applicants will no longer be disadvantaged by filing first outside of the US.

Are inventor notebooks no longer required?

However, this change to the first-to-file system does not mean the practice of keeping well dated and documented notebooks is no longer important. As discussed above, disputes can still arise where one person derives an invention from another person, and files a patent application without authorisation from that other person. In such disputes, notebooks and other documents may be used as proof of inventorship.

When is this happening?

The first-to-file provisions come into effect for US applications with an effective filing date on or after 16 March 2013. Generally the effective filing date equates with the priority date. This means that the first-to-invent system will still apply to US and international applications which rely on an Australian priority application filed before 16 March 2013. So the changes may not be felt by Australian businesses filing in US until after March 2014.