What does the first inventor to file (FITF) rule mean for patents?
The FITF rule for patents states that if two inventors file patent applications for the same invention, the Patent Office will grant the patent to the inventor who filed first, regardless of when they actually conceived the invention.
For example, let’s say the second inventor conceived the invention on January 1 but filed the application on April 1. The Patent Office would still award the patent to the first inventor as long as they filed at any time before April 1, even if they conceived the idea after January 1. Despite being the second inventor to conceive the invention, the first inventor to file would receive the patent because they were the first to file.
Where can I find resources about the First Inventor to File (FITF) rule of the America Invents Act (AIA)?
If you want to learn more about the First Inventor to File rule, you can check out the resources available at Garrity Traina’s website: Garrity Traina.
Are there any exceptions to the strict first inventor to file rule?
No exceptions exist under the strict first-to-file patent rule. The Patent Office looks only at the filing dates of the various applications to determine who should be awarded the patent. The patent is given to the first filed application.
During the examination of the second filed application, the first filed application is considered prior art. As a result, the second filed patent application would be rejected as it is not considered novel.
What exceptions are there to the first inventor to file rule in the United States?
There are three exceptions to the first inventor to file rule in the United States.
First, if the first inventor obtained the invention from the second inventor, the first filed application is not considered prior art to the second filed application.
Second, the first filed application is not prior art if the second inventor had already publicly disclosed the invention before filing the first filed patent application.
Third, the first filed application is not prior art if the first inventor had an obligation to assign the invention rights to the second inventor.
What is the first exception to the first inventor to file rule?
Under the first exception, the first filed patent application is not considered prior art to a second filed application if the second inventor can prove that the first inventor obtained the invention from them.
For example, if it can be proven that the first inventor heard a presentation by the second inventor regarding the invention or if they had been in negotiations with each other, the first filed application will not be considered prior art. In such a case, the second filed patent application will be allowed to proceed and become a patent.
However, this exception does not apply if the second inventor cannot prove that the first inventor obtained the invention from them. For instance, the second inventor needs to provide evidence such as an attendance list with the first inventor’s name to eliminate the first filed application as prior art.
The first exception relies on the second inventor’s ability to prove the first inventor’s source of information. Without the ability to prove it, the first exception is ineffective.
What is the second exception to the first inventor to file rule?
Under the second exception, the first filed patent application is not considered prior art if the second inventor can prove that they publicly disclosed the invention before the filing date of the first filed patent application.
For instance, if the second inventor attended a trade show on January 1 and filed a patent application on March 1, while the first inventor filed on February 1, the second inventor can eliminate the first filed application as prior art by providing evidence of their public disclosure at the trade show. In this scenario, the patent would be awarded to the second inventor.
However, the second inventor must be able to prove the explicit details of what they publicly disclosed. Memories fade over time, and hard drives may be erased or replaced. Finding a picture of the product shown at the trade show is not enough, as it may only depict its housing and not explain how it works.
The second exception will not be effective if the second inventor cannot prove the explicit details of their public disclosure.
What is the third exception to the first inventor to file patent rule?
Under the third exception, the first filed application is not considered prior art if the first inventor had an obligation to assign the rights of the invention to the second inventor.