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5 Things to Know Regarding First-to-File Under the America Invents Act

5 Things to Know Regarding First-to-File Under the America Invents Act

SML Perspectives
(April 2, 2012)

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act (AIA), considered by many the most significant patent reform legislation since the U.S. Patent Act of 1952. The AIA includes many sweeping changes, perhaps none more so than switching the U.S. patent system from a "first-to-invent" system to a "first-to-file" system. The patent systems of most other countries in the world are already based on first-to-file, and our switch has been seen by many as a further step in patent harmonization. Take a look at the following five things to help you understand first-to-file under the AIA.

1: First-to-File vs. First-to-Invent:

Under our current first-to-invent system, a patent is grantable to the first person(s) to conceive of and reduce to practice a patentable invention—i.e., the first person(s) to invent. But under the impending first-to-file system, a patent is instead grantable to the first person(s) who not only conceive of and reduce to practice a patentable invention, but also file their corresponding patent application in the U.S. Patent and Trademark Office. For example, presume an inventor A invents a widget and later files a corresponding patent application; and presume that between A’s invention and application, another inventor B independently invents the same widget and files a separate application. Under first-to-file, priority may be given to B as the first to file, even though A was the first to invent. This system therefore promotes an inventor filing their patent application as soon as possible and considering, as appropriate, whether an even earlier priority date should be obtained by a provisional application filing.

2: Inventorship Still Required:

Under the first-to-file system, priority between two independent patent applicants is given to the first to file their application, but only insofar as both applicants are considered inventors of the claimed subject matter. In fact, in the AIA, first-to-file is more particularly referred to as "first-inventor-to-file." Thus, an applicant generally will not be awarded a patent to the invention of another applicant simply by filing their patent application first.

3: Pre-Filing Public Disclosure:

Although the first-to-file provisions of the AIA generally favor an earlier-filed application to a later-filed application, the AIA includes an exception in the context of a public disclosure made by an inventor or another who obtained the subject matter from an inventor, provided the inventor’s corresponding patent application is filed within 12 months of the disclosure. For example, presume that inventor A publicly discloses their inventive widget and within twelve months thereafter files their corresponding application; and presume that between A’s disclosure and application, inventor B files their application to the same widget. Under the AIA, A’s earlier disclosure may be prior art to B’s application but not A’s; and by virtue of A’s earlier disclosure, B’s earlier-filed application may not be prior art to A’s later-filed application. An inventor may somewhat benefit in this context by the pre-filing public disclosure, but care must still be taken as this type of disclosure may jeopardize foreign patent rights in any of the many countries that have an absolute novelty requirement.

4: Public-Availability Anywhere in the World:

The AIA expands what qualifies as prior art. A patent, published patent application, printed publication, or public use or on-sale activity may all constitute prior art against a claimed invention, but currently for public use or on-sale activity, only if it occurs in the U.S. Under the AIA, however, public use and on-sale activity—and even further any activity that makes the invention "otherwise available to the public"—may constitute prior art even if it occurs outside the U.S. Similarly, currently, an issued U.S. patent or pending U.S. application with a claim of foreign priority may only constitute prior art as of its earliest U.S. filing date. But under the AIA, an issued patent or pending application with foreign priority may constitute prior art as of its earliest priority date—foreign or U.S.

5: File Before March 16, 2013:

Although the AIA was enacted on September 16, 2011, its first-to-file provisions do not become effective until March 16, 2013 (18 months from the date of enactment). The first-to-file provisions will then be generally applied prospectively to any original or continuing application with an effective filing date on or after the effective date, with other applications generally under the former first-to-invent system. Notably, however, all of the claims of a continuing application must be entitled to priority to an earlier, pre-effective-date application to avoid first-to-file. Thus, a continuation or divisional of an earlier, pre-effective-date application will be under first-to-invent, but a continuation-in-part will be under first-to-file. And because the AIA expands what qualifies as prior art, those with inventions before March 16, 2013 may want to consider filing their patent applications (utility or provisional) before that date to avail themselves of the former first-to-invent.

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