Priority Among Competing Patent Applicants Under the American Invents Act

87 Pages Posted: 8 Dec 2011

Date Written: December 5, 2011


This Paper evaluates a historic shift in the United States patent system on how priority is awarded when two or more independent inventors each seek a patent on the same invention. The America Invents Act (AIA) alters the "first to invent" priority principle, which has been a feature of the United States patent system since the earliest statutes in 1790 and 1793. The AIA adopts instead a "first inventor to file" priority principle. The AIA retains a "grace period" of one year for inventor pre-filing date disclosures. It provides remedies for instances in which a first-to-file applicant derived an invention from a second-to-file applicant.

Using a hypothetical example, the Paper describes the AIA's priority provisions in detail. It identifies features of the AIA that are ambiguous. For example, the effective date of the shift is unclear and may be subject to manipulation. The status of a doctrine limiting the prior art effect of previously-filed patent applications (Wertheim) is left uncertain. A fundamental question about a new "derivation proceeding" begs for an answer: is it limited to instances where a second applicant asserting derivation by a first applicant claims substantially the same invention as the first applicant?

The Paper also identifies aspects of the AIA that are clear but perplexing in terms of policy. For example, why was the right to bring a "derived patent suits" limited to a junior-filing patent owner suing within one year of issuance of a senior-filing patent owner's patent?

Keywords: patent law reform, America Invents Act, priority, first to invent, first to file, derivation, AIA, effective date

Suggested Citation

Chisum, Donald, Priority Among Competing Patent Applicants Under the American Invents Act (December 5, 2011). Available at SSRN: or

Donald Chisum (Contact Author)

Chisum Patent Academy ( email )

951 Delong Road
Lexington, KY 40515
United States

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