First to Invent, First to File, or First to Disclose? Patent Reform’s Real Incentive

Many commentators call the Leahy-Smith America Invents Act (AIA) the biggest reform of the United States patent laws in almost 60 years. The AIA’s most publicized and dramatic change transforms the first-to-invent system to a “modified” first-to-file system which becomes effective on March 16, 2013. Why “modified”? Because in order to accommodate the “publishor- perish” model of research institutions, legislators defined prior art in the AIA in a manner that allows inventors to publish first and seek patents later by preserving the one-year grace period granted to enabling publications. The ultimate result, however, is a new patent system that differs in key ways from international first-to-file rules and creates disclosure and filing incentives which are at odds with both pure first-to-file and first-to-invent systems.

In particular, (i) inventors who delay filing can lose valuable patents even if they are the first to file and (ii) parties that initially disclose their inventions through publication may not fully anticipate subsequently disclosed inventions, which lessens the desired prior art blocking protection.

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