Categorized | Down to Business, Law

Legislative update: First to file change in patent law


By Jack Gibney

108586483(1)There was a recent article in the Florida Times-Union about the value of a patent. The article discusses, in part, the idea of patent protection in terms of a corporate policy to protect a potentially highly valuable asset of a business (i.e., a patent). Because the area of intellectual property is fluid in nature, it is important to keep abreast of the recent changes in the law that may impact the protection of the patent.

Congress recently enacted, and the President signed, a major overhaul to the Patent Statute called the America Invents Act on September 16, 2011. The legislation is the most significant revision to the Patent Statute since 1952, and the changes were in effect by March 16, 2013. There were many significant changes to the Patent Statute as a result of this legislation, but one of the most significant, and perhaps the most discussed, is the “first to file” change. Prior to this legislation, the United States had adopted a “first to invent and reduce to practice” analysis when deciding the inventor of a new product, process, or method. This necessarily led to disputes about the proof needed to establish that a particular inventor actually had that “Eureka” moment before anyone else.

Although there was the “first to invent” part of the analysis, the second part that needed to be satisfied was the “reduction to practice” requirement. What this meant was that the inventor could not make a new discovery and then simply do nothing to ensure that it was viable, and later claim that he or she was the inventor. If an inventor had the epiphany moment before anyone else, but did little to nothing to ensure that it was viable, the inventor could lose all rights to the invention.

While the United States had the “first to invent and reduce to practice” requirements, the rest of the world has used the “first to file” analysis to determine the inventor. If you filed first as the inventor, you were declared the inventor, assuming that the item was patentable. This simple yet important change took the inventor dispute largely out of the equation. Presumably, Congress wanted to follow the rest of the world in this regard, but the effect was to take some of the uncertainty regarding inventorship out of the system. How much of an impact it will have on that issue remains to be seen. But it certainly will curtail some litigation and allow an application to be examined on its merits without getting bogged down on the “inventor” issue.


GibneyL. Jack Gibney is a native to Jacksonville and attended local school.  He accepted an appointment to United States Merchant Marine Academy and graduated from that college in 1979 with a B.S. in Engineering.  After graduating from the Academy he worked as an engineer and then returned to law school.  He graduated from FSU law school in 1984. He has been a Florida Bar Member since 1984, a Georgia Bar since 1985 and a Patent Bar since 2001.  Jack has been a sole practitioner since 1988 and currently concentrates his practice in the areas of intellectual property (primarily patents and trademarks) and private adoptions.

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