First to File Patent Systems How the New U.S. System Compares to other Systems Around the World. Professor Ruth Okediji. What is a “First to File” System?. Simple and Efficient Clear Rights Innovation Rights G ranted to F irst Filer, not First Inventor.
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First to File Patent SystemsHow the New U.S. System Compares to other Systems Around the World
Professor Ruth Okediji
Simple and Efficient
Rights Granted to First Filer, not First Inventor
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The AIA requires a report from the SBA on the effects on small business of
eliminating dates of invention in patent applications.
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35 U.S.C. § 100(i)(1)
The term “effective filing date” for a claimed invention in a patent or application for patent means:
35 U.S.C. § 119
35 U.S.C. § 102(b)(1)
A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention if:
35 U.S.C. § 135(a)
An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.
Must Request Within 1 Year of Publication
USPTO Director Decides to Institute
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Section 6: If two or more persons made an invention independently of each other, the right shall belong to the person who is the first to file an application with the Patent Office.
(a): an evident abuse in relation to the applicant or his legal predecessor, or
(b): the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.
“The true and first inventor is not necessarily the first discoverer of the invention. If it had been discovered by another, but the discovery had never been divulged, he who independently discovers the same thing, and is the first to disclose it or to apply for a patent, which is eventually granted, is the true and first inventor.” - Edmunds on Patents, 2ed, 1897.
“Should two applications of the same effective date be received from two different applicants, each must be allowed to proceed as though the other did not exist.”
Article 39(1): “Where two or more patent applications relating to the same invention are filed on different dates, only the first applicant may obtain a patent for the invention”
Article 36(1) Where two or more applications relating to the same invention are filed on different dates, only the applicant filing the application having the earlier filing date may obtain a patent for the invention.
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