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Patent Harmonization: Moving To A First-To-File Patent System

Michael R. Hull

Miller Matthias & Hull, LLP, Partner, Chicago, IL, USA

Congress is currently considering the Patent Reform Act of 2010. If passed, and there is a good chance it may be passed, one significant change would be the adoption of a “first-to-file” system and the abandonment of our current “first-to-invent” system. Most corporations are strongly in favor of making this change. However, some small businesses and individual inventors are outraged over this proposed change. We at Miller Matthias & Hull LLP favor the change to a first-to-file system and think the concerns of some small businesses and individuals are unfounded for the following reasons.

First of all, what is the difference between our current first-to-invent and the proposed first-to-file system? In short, in the U.S., under 35 USC § 102(g) if two people create the same invention and file competing patent applications claiming the same invention in the U.S. Patent Office, the Patent Office will award the patent to the inventor who was the first-to-invent, not the inventor who filed the first patent application. The Patent Office uses a complex legal proceeding known as a patent interference to determine the first inventor. The inventor who prevails in the interference will be the inventor who establishes the earliest date of conception (i.e., the “eureka moment”), in combination with diligence between (1) the date of conception and (2) the filing date of the application or the date the invention was reduced to practice (i.e., an embodiment of the invention was created or practiced). Interferences often require inventors to spend enormous amounts of time on these historical matter issues instead of doing what they do best—creating new inventions. Not only do interferences consume vast amounts of inventor time, they can be as costly as patent litigation, which, as you may know, is a budget busting experience for U.S. litigants.

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