What is the “First-to-File” system?

“First-to-File” (also known as first inventor to file) is a system which gives the right to grant a patent to the first person(s) to file a patent application for protection of the invention.  This is allowed regardless of the date of the actual invention.  In all countries worldwide, apart from the U.S., First-to-File is the  system of choice.

The United States and the Philippines currently use a First-to-Invent system.  Under this system, the first party to invent is entitled to patent rights upon filing of the patent application.  This means that, even if the first party to invent is not the first party to file, that party can claim patent rights.  The inventor has to be diligent in providing evidence of the date of conception of the invention, and must reduce the invention to practice by filing.  If two inventors files patent applications on the same invention, an interference hearing must take place to determine who conceived the invention first.  This is an expensive procedure which adds to the already high costs of applying for and being granted a patent.  Recent developments in changes to the U.S. Patent Law bills means there is now a bill awaiting a vote from the U.S. House of Representatives to change the first-to-invent system to first-to-file, in line with the rest of the world.

The advantage of the First-to-File system is that it is far simpler – there are no interference procedures.  Another advantage is that it eliminates any “secret prior art“, in which inventions not yet applied for can be used as prior art in a patent prosecution.  However, there are also disadvantages against first-to-file, the major one being that it creates a race to the patent office, resulting in a possibly rushed and half baked application.  This means that the breadth of the invention may not have been fully determined, a thorough search on prior art may not have occurred, and a working prototype of the invention was not prepared.  The proposed changes to the U.S. Patent Law bill is aimed to bring the U.S. in line with other countries and does not focus on the negatives.