Are the U.S. Patent Priority Rules Really Necessary?

Abstract

The United States is the only country in the world that awards patents tothe first person to invent something, rather than the first to file apatent application. In order to determine who is first to invent, theUnited States has created an elaborate set of "interference" proceedingsand legal standards to define invention and decide how it may be proven.Supporters of this system claim that it is necessary to protect smallinventors, who may not have the resources to file patent applicationsquickly, and may therefore lose a patent race to large companies whoinvented after they did. Advocates of global patent harmonization havesuggested, however, that the first inventor is usually also the first tofile, and that the first-to-invent standard is unnecessary and wasteful.In this Article, we study U.S. Patent and Trademark Office ("PTO")interference proceedings and court cases in which the parties dispute whois first to invent. We find that the first person to file is usually, butby no means always, also the first to invent. In over 40% of the cases, thefirst to invent is last to file. We also find that the long-standing rulethat discriminated against foreign inventors by requiring proof ofinventive activity in the U.S. had surprisingly little effect on outcomes;that a large number of priority disputes involve near-simultaneousinvention; and that the vast majority of such disputes could be resolvedwithout reliance on much of the evidence the law permits. Finally, we studythe role of small inventors to see whether they are disproportionately thebeneficiaries of the first to invent system. While the evidence is mixed,it does not appear that small inventors particularly benefit from the firstto invent system.Part I describes the legal background for the international debate over howto determine patent priority. Part II describes our studies and discussesour results in detail. Finally, Part III draws conclusions forpolicy-makers from the data. There is some truth to the arguments of bothsides in this debate. The first to invent system does produce significantlydifferent results in individual cases than a first to file system would.But it is not clear that those different results are particularly fairer,or that they are worth the cost. We suggest some possible ways to modifythe U.S. system to take account of these facts without changing entirely toa first-to-file system.

Cite this work

No public copy is stored for this record, so only the metadata is cited.

Stored only when both papers are in the corpus — 8 citations exist upstream.

Papers that cite the same references — the relational fallback while embeddings are still backfilling.