The first to invent policy is a controversial patent law doctrine only used in the United States to decide which inventor shall be awarded a patent in case two or more of them reached the same invention independently at about the same time. Based on this policy, under limited circumstances, Tom, the first to invent, can defeat Jerry, the first to file, in a possibly costly and tedious legal proceeding.
This policy regarding multiple parties' priority rights is only applicable to unrelated independent inventions. If Tom and Jerry worked together to create the invention, neither party can file patent application without naming the other one as a co-inventor. If incorrect inventorship (nonjoiner or misjoiner) is found with deceptive intent, the whole patent would be invalidated.
In the U.S., most inventors do not encounter first to invent problems. The United States Patent and Trademark Office (USPTO) usually works exactly the same as its global counterparts. The first to invent doctrine is only applicable with:
- two pending applications, or
- one pending application and a patent issued within a year of the pending application's filing date.
In an imaginary world, two inventors are secretly working on the greatest sure-kill mousetrap. Tom, the diligent first inventor, invented it. But he did not file the patent application. He wanted to improve it so it can be mass produced by ACME.
Jerry, the smarty co-resident in Tom's household, noticed Tom's work and developed the same invention shortly after Tom's success. Jerry has no use of that invention, but he wants to bar Tom from using it. He hired his fast running Mexican cousin to deliver patent application and became the first to file.
Both of them kept the invention as a trade secret.
If Tom noticed Jerry's move in time, he may prevail in an interference proceeding filed to the USPTO. If Tom released the invention to the public before Jerry's filing, he can claim prior art and use it to invalidate Jerry's patent (the invention goes to the public domain thereafter). Otherwise, he can do nearly nothing to Tom. If he uses it, he is not allowed to raise so-called "prior use right" as a legal defense in a patent infringement lawsuit because the subject matter is not a business method patent. He can try to negotiate a license from Jerry or catch the mouse the same old way.
In many less profitable areas, only a handful of inventions are so valuable to justify expensive lawsuits. The patentee may not have the money to monitor all competitors in the whole U.S. Therefore, the real first inventor may not feel any legal threat.
In those highly lucrative areas, most patents are still left unused or not profitable. They were created to please investors or used to deter possible competitors. Even if the first to invent doctrine is applicable, the first inventor may not want to waste money and time in a pointless litigation.
Therefore, the first to invent doctrine is not very different from the first to file in practice. However, there are still some cases it will be used. In the early 1960s, about 1,000 such interference proceedings had taken place each year. The numbers of interference proceedings are getting fewer and fewer year by year. Since the late 1990s, it became less than 200 cases each year despite of the so-called "patent explosion". Only in about 60 cases a year where the challenger are determined to have been the first inventor. This is rarely a very good business except for a small band of very specialized patent lawyers.
By its very nature, first to invent system is not feasible in countries where the market is too small to justify expensive litigations. It also burdens inventors because they may want to preserve evidence of their earlier invention in advance. That is why first to file doctrine is the mainstream doctrine today.
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