The 'Matrix' for First-Inventor-To-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law

Abstract

The Patent Reform Act of 2009 would replace the current “first-to-invent” (FTI) system with a new “first-inventor-to-file” (FITF) system. The proposed FITF system has been characterized as an attempt to harmonize US patent law with “first-to-file” (FTF) systems that are used in other countries by redefining prior art and effective filing dates of applications so as to encourage early filing of patent applications, while also attempting to maintain some kind of grace period for the inventor's own work. The premise behind the push toward an FITF system has been that an FITF system would be a compromise between the current FTI and FTF systems. A structured investigation of the proposed FITF system, however, reveals that the underlying premise behind an FITF system may not be supported. A "matrix" of results, from an experimental application of the proposed FITF system to a series of typical fact patterns for two competing inventors, is presented to demonstrate how the proposed changes redefining prior art and the effective filing dates of applications may impact the behavior of the FITF system as compared to the current FTI and FTF systems. Based on the matrix analysis, it appears that if FITF is adopted there likely will be both a change in applicant behavior and significant extra costs for at least several years as a result of the transition to a new system, and it is unclear whether FITF really gets the US any closer to patent harmonization.

Keywords: Patent Reform Act of 2009, first-to-file, first-to-invent, first-inventor-to-file, US Patent Law