‘First-inventor-to-file’ rule could alter patent process

Ryan Dionne

A new strawberry plant, an optical fiber amplifier, radioimmunotoxins and a visualization spreadsheet are among the patents the University has been issued in the past.

Between July 1, 2003, and June 30, 2004, 38 patents were granted to the University for new inventions out of 81 applications, according to the University’s Patents and Technology Marketing office.

University inventors and others could see a change in the system through which inventors acquire a patent if Congress adopts the “first inventor to file rule” the American Bar Association is urging.

Right now, a person who files a patent can still be overruled if it turns out someone else came up with the invention first but didn’t file for a patent. The new law would give the patent to whoever applies for it first.

Currently, the patent process is unpredictable and expensive, said Bill LaFuze, chairman of the American Bar Association’s section of intellectual property law.

Discrepancies often occur between inventors about who has the rights to the patent, he said. Small businesses and private inventors have lost more patent-rights-related conflicts than they have won, LaFuze said, and it costs people approximately $300,000 to resolve such disputes.

He said the United States is the only country in the world to not have a first-inventor-to-file rule.

“There are far more people who support this (proposed system) than oppose this,” LaFuze said.

Many people who don’t support it don’t understand it, he said.

The biggest downside of the first-inventor-to-file rule is that the person who first has a potentially patentable idea might lose his or her rights if he or she doesn’t file first, LaFuze said.

“In theory, someone always runs the risk of losing (patent) rights, but that’s true in both systems,” he said.

Some people might not file for patents immediately because of the cost involved.

The application cost depends on the complexity of the invention, but it could be between a few hundred to tens of thousands of dollars, said Tony Strauss, Patents and Technology Marketing assistant vice president.

Strauss said that the University won’t see many advantages of a new patent system if there is a change.

It’s advantageous to have the current first-to-invent rule, because the University is often the first to invent, he said.

If the first-inventor-to-file rule is adopted, the office will have to work harder at the beginning of the process to get inventions filed first, Strauss said.

A first-inventor-to-file system appears to be in place already, he said, because when a controversy occurs about who was the original inventor, the person who filed first usually prevails.

Despite thorough record-keeping by inventors, it’s hard to prove who had the idea first, Strauss said.

If the first-inventor-to-file rule is adopted, it could become easier to obtain international patents, because the system would be universal among countries, he said.

“That would have a lot of advantages to us and to everybody,” he said.