What is My Date of Invention? How Does the First to Invent System Work?

The United States is, for now, different from other countries in that it uses a “First to Invent” system, rather than “First to File.”  In other countries there is generally a race to the patent office- the first inventor to file an application gets the right to the patent for the invention, even if he or she was not the first person to invent it.

One advantage to a “First to File” system is that it is easy to determine who filed the first application and therefore the system is easy and inexpensive to administer.   However, the disadvantage of that system is that it places individual inventors and small businesses at a disadvantage. They take longer to get an application into the patent office  because they often do not have a streamlined invention-to-application process in place.

Also, the first-to-file system is fundamentally unfair, rewarding the fulfillment of an administrative requirement over innovation. The “First to Invent” system has the opposite pros and cons.  While it is fairer, particularly to small entities, it can be difficult and expensive to apply and administer.

For example, how do you prove that you invented something before someone else?  What day is the day of your “invention”?  The day you came up with the idea?  The day you figured out how to make it work? What if you took a break before finishing the invention? The Patent Office has rules to answer these questions, but the determinations are often difficult.

What is the Earliest Date of Invention I Can Rely On?

Perhaps the most important thing to determine is what the earliest date of invention that you can rely on is.  This is the day that you conceived of your invention- the day you first thought of it.

But, you lose this date if you stop working on your invention.  Once you conceive of your invention, you must work diligently on it until you either file a patent application for it or “reduce it to practice.”

If there was a gap between your conception of the invention and the date you filed a patent application or reduced your invention to practice, the earliest date you can rely on is the first date after which there were no gaps. The earliest day you can rely on is known as your earliest “priority date.”  Unless you give up your patent rights, for example by abandoning your invention, you have priority at the Patent Office over anyone with a priority date after yours.

Example:

So, let’s say you got the idea for your invention on May 6, 2007.  You think for a few days about how to implement it, but then something comes up in work and you forget about the invention for a couple months.

On July 27, 2007 something makes you think of your idea again and you pick back up working on it.  You start working on a couple designs, but after a month or so you again get sidetracked and stop working on it.

On October 6, 2007 you pick back up on the designs and work diligently until handing your designs and other information off to a patent attorney on December 3, 2007  for filing a patent application.  Your patent attorney works diligently on your application until finishing and filing it on December 27, 2007.

What is the earliest date you can rely on in this scenario? You cannot rely on May 6, 2007, the date of conception, because there is a gap between the date of conception and the date of filing your patent application where you were not working diligently on reducing your invention to practice.

The first date you can rely on is the earliest date after which there were no gaps.  Here, that date is October 6, 2007.  After that date, you or your patent attorney were working diligently on the invention right up until the application was filed.  There are no gaps in diligence between that date and the date of filing.

What is conception of an invention?

Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (quoting 1 Robinson On Patents 532 (1890)).  It is not enough to have a general idea of the goal of the invention.  Rather, you must have an idea of how the invention will work.

What is reduction to practice?

An invention is reduced to practice when it works for its intended purpose.  If you are working on your invention trying to make it work properly, you are reducing it to practice.  A working model is strong evidence of reduction to practice.

The filing of a patent application is also referred to as “constructive reduction to practice.”  Basically, that means that even though your invention has not yet been reduced to practice, the law will pretend that it has been, as of the date of filing of your application.

The effect of your date of invention on patentability

If a reference is cited against the patentability of your invention and was issued or published less than one year before the date you filed your application, you can swear in back  of it (antedate it) to remove it as a reference.  To do this, you must show a date of invention prior to the earliest priority date of the reference- generally the filing date of a patent, but sometimes the filing date of a priority document such as a provisional or parent application.

This requires that you provide evidence indicating that you worked diligently on your invention from a date before the earliest priority date of the reference up until you either reduced your invention to practice or filed your patent application.  You do not have to prove your earliest date if you do not want to.

You may have evidence showing a very early date of invention, but much better evidence showing a later date of invention that is still before the filing date of the reference.  In that circumstance, you may wish to rely on the later date that is easier to prove.

Note that you cannot swear in back of/antedate a reference if it claims the same invention as you.  In that case, an interference proceeding should be conducted to determine the earliest inventor.  An interference proceeding is like a trial and can be quite expensive, although it is usually resolved more rapidly than a lawsuit, generally within a year or two.  Interference proceedings will be discussed at greater length in another post.

Are there any wrinkles I have left out?  Do you have any questions about the application of these rules?  Please leave them in the comments below.