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America Invents Act: Patents Now Awarded to First to File

By Cynthia Hsu, Esq. on September 26, 2011 | Last updated on March 21, 2019

President Obama has signed the America Invents Act into law, greatly overhauling much of the nation's patent-awarding system.

The Act is the first major change to U.S. patent law since 1952.

It seems that the biggest change to come from this legislation is that it creates a "first to file" system, USA Today reports.

Patent and intellectual property attorneys across the nation have followed the old "first to invent" system for years. What does the shift to a "first to file" system and the new America Invents Act mean for general counsels?

It might expedite the patent awarding process. The patent office is facing a major backlog of 1.2 million pending patents. Currently, it takes about three years for a patent to be approved, according to the Chicago Sun-Times.

The America Invents Act also allows the U.S. Patent and Trademark Office keep the revenues from fees. It will soon be hiring somewhere between 1,500 and 2,000 new examiners to handle patent reviews, according to USA Today.

And, this new patent reform might cut down on the number of patent lawsuits. The "first to invent" system has the potential to invite more litigation, as individuals can claim to be "first inventors" and file suit for patent rights.

Litigation in a "first to file" system would likely be much easier to settle. Simply put, those who filed with the USPTO first would be awarded the patent. And, disputes over who was the first to invent to product would be moot.

Of course, now that patent rights will not be awarded to those who come up with the idea first, keeping new products and ideas under wraps will become vital.

If someone steals your company's idea and patents it first, your company may be in a lot of hot water.

Attorneys may need to start advising companies about the importance keeping confidential information locked down under the America Invents Act. And, get ready with your patent applications - you don't get any brownie points for being the "second to file."

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