One of the most talked about aspects of the Leahy-Smith America Invents Act (AIA) was the provision affecting a change from a “first-to-invent” system to a “first-inventor-to-file” system in the United States. Under the traditional system, an inventor would be entitled to patent rights against all challengers, assuming all other application requirements met, upon proof of the earliest date of invention. However, under the new system, an inventor can assert patent rights only if the application is received by the USPTO prior to any challengers’ applications, with some nuances regarding the grace period for certain types of disclosures. Whether good or bad for the long-term prognosis of the US patent system, the AIA’s shift to “first-inventor-to-file” has given rise to secondary issues regarding strength and quality of the application and disclosures.
Traditionally, great effort has been placed on performing extensive prior art searches and on drafting numerous, high-quality claims. An article in 2007, comparing the benefits of the two types of filing systems, noted a trend that US patents tended to be longer and contain more claims than foreign patents filed under first-to-file systems. The article attributed the strength of US patents to the somewhat “relaxed” nature of the traditional US system which allowed for a greater amount of due diligence in preparing the application. These measures, of course, cost large amounts of money and time, which inventors may be unwilling to invest if another inventor may win the race to file the application. The result is a perceived decrease in patent application quality in the rush to reach the USPTO.
In the mad dash to prepare the patent application, quality need not be thrown out the window. Data analytics tools now exist which can assist inventors and practitioners constrained by resources and time. One such advantage is the use of text-to-image searches. The novel technology allows users to input simple keywords and have the software return patents whose images contain parts with those keywords or combinations of those keywords. Finding prior art has never been easier or more intuitive. Additionally, other data analytics programs give users the ability to more closely correlate the claim set to the specification. Close correlation between claims and specification will aid in weathering challenges to the patent which may arise down the road. Tools such as these give major benefits to the inventor while only requiring minimal monetary and time costs.
Quality can still be achieved while still meeting the stringent requirements of innovating within a “first-inventor-to-file” system. When the “first-inventor-to-file” provisions became effective in early 2013, the universal piece of advice from patent attorneys was to “file first, file often.” The same is true today, but would be better modified to read “file first effectively, file often robustly” with data analytics.