Proposed First-to-File System: Advantages & Disadvantages

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The proposed Patent Reform Act of 2011 is once again attempting to bring the United States in line with the first-to-file priority systems of the rest of the world.  This would reduce much of the uncertainty, time, and expense of obtaining priority under the current first-to-invent system.

Most of the uncertainty stems from the consideration of “reasonable diligence” in determining priority in a first-to-invent system, which requires case-by-case adjudication of whether certain excuses for periods of inactivity in developing the invention deserve recognition.  In some cases, the litigation required to resolve this uncertainty has spanned a decade or more.  Furthermore, this litigation must be supported at considerable expense for items such as documentary and testimonial evidence to prove the dates of conception and reduction to practice.  The proposed legislation would replace much of the disadvantages of the current system with a relatively simple race to file.


However, a first-to-file system is not without its own issues.  Such a system would favor large corporations, which have the resources to win the race to file.  Sole inventors or individuals often do not have the time or the money to file or hire an attorney to file a patent application.

Small entities, which often commercialize their products months before filing, are similarly disadvantaged by the proposed legislation, which would eliminate the grace period they need to remain economically viable.  Although there are reduced filing fees available for smaller applicants, without further means available for offsetting other costs like attorney’s fees, the proverbial playing field will not be level.