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First to file, First to invent, FTI, FITF, Patent reform, USPTO, Prior user rights, Grace period, Technology Transfer Offices


“One is the loneliest number that you’ll ever do.” This lyric applies to the United States which, since 1998, stands alone among the world’s patent systems in awarding patents to the first person to invent a claimed invention (first to invent, or “FTI”) as opposed to the first inventor to file an application claiming the invention (“FITF”). But its lonely days may soon be over: a provision in pending patent reform legislation will (if passed) move the United States from FTI to FITF and end its solitary stance.

Some argue that the U.S. already has a de facto FITF system, since the first filer usually wins disputes regarding the priority of an invention. Additionally, many U.S. inventors who file for patent protection in other countries with FITF systems have already conformed their practices accordingly. If a de facto FITF regime is already in place, and if many inventors are already adapting their practices to comply with such a system, the U.S. may have little to lose and much to gain from making the switch to FITF.

But then again, maybe not. Much has been written about a U.S. move from FTI to FITF and its potential costs and benefits. However, since this Essay accompanies a symposium on intellectual property and entrepreneurship, it considers how a FITF regime change may impact small-entity inventors, particularly those from academic enterprises. The patent system holds both promise and peril for this group of inventors, and their inventive efforts are becoming increasingly important to this country.

Part II of this Essay surveys certain costs and benefits associated with both FTI and FITF systems, and the impact each may have on small entity inventors. Part III focuses on the one-year grace period for filing patent applications in the U.S. after public disclosure of an invention. This grace period, a device useful to both large and small entities, is especially important to independent and academic inventors but, unfortunately, is unavailable in most other countries. Additionally, Part III discusses why a move to FITF by the U.S. significantly challenges the usefulness of a grace period for small entity inventors. Part IV of the Essay concludes that in light of these challenges, U.S. adoption of FITF should only proceed in conjunction with the adoption of a one-year grace period by the other major patent-granting countries.

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Berkeley Technology Law Journal


© 2008 Margo A. Bagley.