First-to-file vs first-to-invent are two important legal concepts for inventors as they determine who gets the patent rights to a newly formed IP.

It’s not uncommon for different individuals or companies to come forward with similar inventions at the same time. When this happens, it’s these concepts that determine who’d be the rightful owner of the IP in question – one who invented it or one who’s quick in filing for it.

Let’s dig deeper to discern the difference between first-to-file and first-to-invent in patent law and why it’s necessary to understand it for inventors seeking rights to their inventions.

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The Importance of Differentiating Between First-to-File and First-to-Invent System

With the ever-increasing technological landscape and multiple companies working on similar inventions, there is an increased need to claim patent rights first.

Picture this: your company develops an invention in 5 months, only to find out that a competitor has already invented and filed for its patent rights. The outcome? You will have to pay royalties to use your own invention.

Such legal complexities necessitate inventors to know what approach is followed by their country between first-to-invent and first-to-file. Moreover, they must understand how these patent concepts are different so they can apply for ownership rights timely and in the correct manner.

In simpler terms, the first-to-invent system favors the first person to invent an IP, whereas the first-to-file favors the person who’s first to file for it when awarding the patent.

Thus, knowing the difference between first-to-file or first-to-invent will help you understand whether it’s the race to the patent office or to invent the concept first.

What is a First-to-Invent System?

As the name suggests, this system means the person or company who first invents a concept owns the patent. For this approach, the inventor has to provide proof of the earliest date of the idea’s conception and how he furthered it into practice.

The U.S. was among the last major countries to operate under it until the America Invents Act (AIA) moved to the first-to-file system in 2013.

What is a First-to-File System?

Contrastingly, this system prioritizes the inventor or company who first files a patent application, regardless of the invention’s conception date.

Most of the countries, including the European Union and Canada, use this system.

Key Differences between First-to-File and First-to-Invent Systems?

There are several factors that determine the basis of patent first-to-file vs first-to-invent, including:

1. Timing and Priority

According to the first-to-invent policy, the date of conception of the idea holds priority. The inventor has to provide both this and the proof of diligent effort to reduce the invention to practice.

On the contrary, as per the first-inventor-to-file concept, the date of filing a patent application is considered for awarding the rights to it. This encourages inventors to file for their IP as early as possible, which will limit the likelihood of disputes.

2. Documentation and Evidence

In the first-to-invent system, extensive documentation and evidence is needed. The inventor has to produce lab results, sketches, procedural documents, and more to prove the original date of conception and his diligence in developing the invention.

The inventor’s research process is also traced via trade catalogs and financial records of purchasing relevant equipment. The entire process can be time-taking, cumbersome, and costly.

On the flip side, the first-inventor-to-file system is simple. The filing date of the patent application serves as adequate evidence for giving priority to the filer.

3. Impact on Inventors

The first-to-file system encourages inventors to file patents as soon as possible. This prompts them to speed up the invention process, but it can lead to premature or incomplete patent applications, where all aspects of the conceived idea might not be clear.

On the other hand, the first-to-invent system is rewarding for precision over speed. The inventors can take an ample amount of time to develop their ideas into perfection, which is useful for society.

4. Impact on Small Entities

Independent inventors and small-scale startups often find the first-to-file system challenging. The corporate applicants represented by attorneys may get preference over those who file it on their own. Moreover, inventors get limited time to put their ideas into practice.

While the first-to-invent system allows inventors to refine their inventions. But, the amount of documentation and probably the legal battles to produce the earliest invention dates is tiresome. Most small-scale entities probably lose the patent due to a lack of money and resources.

5. Global Perspective

The members of the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO) follow the first-inventor-to-file (FITF) system. It is a simpler process and has certain provisions to protect the rights of the original inventor.

The first-to-invent policy was followed by the U.S. until 2013, but it has transitioned to the first-to-file system understanding the simplicity of the process.

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Advantages and Disadvantages of First-to-File and First-to-Invent System

A clear difference between the first-to-invent vs first-to-file system is established by finding the good and bad of both, as discussed below:

Advantages of First-to-Invent System: It is beneficial for inventors as it promotes innovation to reach its perfect form. This legal patent concept treats individual inventors and small enterprises with equality and fairness in law.

Disadvantages of First-to-Invent System: The downside to this system is that the court proceedings can take time requiring multiple documents and pieces of evidence to be produced. This, in turn, can lead to complex legal battles over the determination of the first inventor.

Advantages of First-to-File System: It benefits the fast-paced world of innovation today. The first-to-file system promotes speed and clarity, where the first inventor to file gets the patent rights.

Disadvantages of First-to-File System: The drawback of this system is that the corporate or more resourceful entities can have an unfair advantage over the startups or individual inventors. Moreover, the race to the patent office first can discourage inventors from taking their time to make the invention optimally useful for society.

Summing Up

To sum up, the concept of first-to-file vs first-to-invent is developed to award the patent of an invention to its rightful owner. Amongst these, if the best and most efficient process needs to be selected, it would be the first-to-file system.

The extensive record-keeping required by the first-to-invent concept is painstaking and delays the process of acquiring the patent. Therefore, almost every country around the globe now follows the first-to-file policy to award the patent.

So, if you are an inventor, it’s important for you to file for the patent at your earliest after you conceive the idea. It’ll prevent you from having any regrets later.

Frequently Asked Questions

The process for registering a trademark varies from country to country. To file for a trademark in the US, you can file an online application with the USPTO. The USPTO entertains two types of applications: ‘In-use’ and ‘Intent to use’. The online application is known as Trademark Electronic Application System (TEAS).

Just like every country has its own registration process, the cost varies as well. Depending on the legal fees and the length of the process, the cost can go up or down. In the US, the price of registering a trademark ranges from $500 to $3000.

You need to file an application which should contain: your name and address, if it’s a business then the type of legal entity it is, details of the trademark, list of goods and services, the details of the class(es). 

Yes, you can file for both: a local and an international trademark. Some countries entertain a single application to register a trademark locally as well as internationally. 

Yes. It is possible to register a trademark in multiple countries with a single application but it depends on which union the country is part of. You can do this through the Madrid Protocol or EUIPO. 

Countries have different laws regarding what can be registered as a trademark. In the US, the types of trademarks that can be registered are slogans, shapes, names, phrases words, images, 3D shapes, holograms, smells, and colors.

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