Protecting Your Ideas

80

The Invention Process

The United States: A First

to Invent Country

Since the U.S. is a first to invent country, a patent is granted to

the person who can prove that he or she was the first to invent. This

differs significantly from most countries where the patent is awarded

to the first person who files a patent application. When a person can

prove that he or she was the first to invent,

priority of invention

is

established.

Priority of invention is awarded to the one who can

prove that he or she was the first to invent. The inventor

with priority of invention is granted the patent.

Although the U.S. does not have a first to file system, having

the earliest possible filing date is still important. The advantage to

this is realized when two or more parties claim the same invention.

When this event occurs, an interference is declared.

An interference is an administrative proceeding that

takes place in the U.S.P.T.O. During this proceeding, the

Board of Patent Appeals and Interferences must deter-

mine who was the first to invent. The one who can prove

priority of invention is entitled to the patent.

The party having the earliest possible filing date is awarded senior

party status. This status places the burden of providing evidence of

an earlier date of invention on the other party, or the junior party. In

order to win the interference, the inventor must show the earliest

date of conception and reduction to practice. In addition, the inven-

tor may need to provide evidence that he or she was diligent in re-

ducing the invention to practice and subsequently preparing and ill-

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The U.S.: A First to Invent Country

ing a patent application in the U.S.P.T.O. There are three ways in

which a party may win an interference:

(1) by being the first to conceive and the first to reduce to

practice;

(2) by being the first to conceive and the last to reduce to prac-

tice, coupled with diligence; and

(3) by being second to conceive but first to reduce to practice

where the other party was

not

diligent in reducing the invention to

practice.

Figure 3.1 and the following example demonstrates the third

scenario.

EXAMPLE

Chet conceived of a new watch mechanism on Feb-

ruary 3, 1995. However, due to financial constraints

and personal obligations he was not able to begin

working on the invention until December I, 1995.

From December I, 1995 until February 3, 1996, Chet

worked continuously on the new watch mechanism.

On February 3, 1996, he had completed testing on the

mechanism. On March 3, 1996, Chet filed his patent

application in the U.S.P.T.O., claiming the mechanism.

Fred conceived of a new watch mechanism that was

similar to Chet's, on July 3, 1995. Fred was so excited

about his idea that he immediately went to work on a

prototype. By November 1, 1995, Fred had completed

testing on the mechanism. On January 3, 1996, Fred

filed his patent application in the U.S.P.T.O., claiming

the mechanism.