September 17 2012

First inventor to file will get the patent

Vincent LoTempio Blog, Patent "derivation proceedings", first person to file, first-inventor-to-file system

To further work toward implementing the Leahy-Smith America Invents Act (AIA) into law the U.S. Department of Commerce’s U.S. Patent and Trademark Office (USPTO) is creating a derivation proceeding to make sure the first person to file a patent application is actually the true inventor.

The actual rule for derivation proceedings will take effect on March 16, 2013. The final rule was published September 11, 2012 in the Federal Register.

The new derivation proceeding will be way for an actual inventor to stop a person from getting a patent for an invention that they did not actually invent.

If a true first inventor is not the first to file, the true inventor may challenge the first applicant’s right to a patent by showing that the first applicant is filing for an invention derived from the actual inventor.

The derivation proceeding is the first step in changing the U.S. patent system from a first-to-invent to a first-inventor-to-file system. Derivation proceedings will be conducted by the USPTO’s Patent Trial and Appeal Board.

“Our historic shift to a first-inventor-to-file system reduces legal costs, improves transparency, and allows us to harmonize our patent system with the rest of the world, all of which will help U.S. innovators and strengthen our economy,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare.”

The final rule is based on public comment the USPTO received after issuing a Notice of Proposed Rulemaking in February, 2012, as well as a series of public forums held across the country. In light of the comments, the Office has made appropriate modifications to the proposed rules to provide greater clarity and a more timely and efficient process.