September 10, 2011

US Patent System:Shift from "First-to-Invent" Doctrine to "First-to-File" Doctrine.

Finally Patent system of United States of America is going to adopt “First-to-file” doctrine, in the lines of most of the other countries of the world. The United States and the Philippines were the only two countries in the world whose patent systems are based on First-to-Invent regime. Philippines have already adopted “First-to-file” doctrine. United States of America is going to be the last country to adopt “First-to-file” doctrine. In this system, the patent is granted to the inventor, who is the first to file a patent application at USPTO. After being many unsuccessful attempts to change the US patent system from a First-to-Invent to a First-to-File system, in the year 2011, it is going to be successful. Patent reform bill, is approved by the U.S. Senate In the month of September 2011. The only requirement left is the signature of President Barack Obama.

Advantages of First-to-file:
It is an expensive and involved procedure as it involves in determining who conceived of the invention first, is a tough Job. It rewards the first inventor, not the winner of the race to the Patent Office.
By the use of “First-to-file” doctrine, costly and lengthy interference proceeding at USPTO is going to come to an end. And also it’s a matter of rejoice to small inventor, as it was proving to be expensive for fighting patent interference proceedings.
Another advantage of the First-to-File system is that it eliminates so-called "secret prior art," which are inventions for which patent applications have not yet been filed and therefore cannot be found through a prior art search. As most of the parties will be interested in filing their application as soon as they deem fit. As United States is a developed country with a well developed patent system, public at large is going to get benefit from the system.

Disadvantages of First to file:

Universities are the major incubators of research and development. These universities derive significant income from technology transfer and patent licensing. Scientists/academicians are more concerned with presenting their results at conferences and publishing them in peer-reviewed journals, as an elaborate discussion/debate at various levels brings positive impacts to the research, or matters which were not looked at is given a priority in order to achieve a better and a productive result.   A change to the First-to-File regime may have the unintended consequence of a sharp decline in university patents, ultimately resulting in a decline of technology transfer revenues.

Over all, this is going to benefit public at large, but concerns are bounds to happen, as communities like Biotechnology, biomedical, pharmaceutical, agricultural communities will be in the race of filing applications at USPTO, leaving room for mistakes that can cause headaches for all involved. Concerns with these industries are going to grow in a rapid manner. Hoping USPTO to consider concerns of these particular communities on priority.

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