United States now a “First to File” jurisdiction

phonograph1-200x132 Los Angeles – The America Invents Act, passed by the United States Senate 89-9 on Thursday September 22, 2011 and shortly after signed into law by President Barack Obama, has been described as a significant overhaul of the patent process. The Act is, in part, an effort to reduce the ever-increasing length of time between the initial filing of a patent application and the issuance of a patent by the USPTO. Signing the bill into law, President Obama noted that while Thomas Edison’s patent application for the phonograph was granted in seven weeks, the average application process today lasts three years.

Furthermore, since the year 2000, the amount of patent applications submitted to the USPTO annually has almost tripled, with more than 500,000 applications submitted in 2010. The USPTO is now faced with a backlog of over one million patent applications. The increasing amount of patent applications and flaws in the current system prompted the bill, which is designed to simplify the process, increase innovation, and decrease the prevalence of lengthy and expensive litigation in the patent process.

Perhaps the most significant change is the section of the Act that now gives priority to the first party to file a patent application. Previously, the first to invent and reduce an invention to practice was given priority in the patent process, regardless of whether he or she was the first to file. Under the new legislation, the first to file the patent application will be given preference.

Currently the majority approach internationally, the first to file system reduces the need for contesting patent applicants based on who was the first to invent or reduce an invention to practice. Instead, the first to file the application for patent protection will be given preference for that particular invention or discovery.

Critics of the Act express concern that the first to file system will favor large companies with the resources to file numerous patent applications over individual inventors with less resources. Individual inventors are often forced to carefully weigh their chances of successfully marketing the invention against the cost of filing the application. Individual inventors may find assistance at the USPTO’s 84 Patent and Trademark Depository Libraries located throughout the United States which provide inventors and entrepreneurs with information and resources regarding the patent process.




  • Please solve equation. - Confidential information should not be submitted and an attorney-client relationship is not created.
  • This field is for validation purposes and should be left unchanged.