File Early, File Often A key provision of the patent reform lawreplaces the “first-to-inven

File Early, File Often

A key provision of the patent reform lawreplaces the “first-to-invent” system with a first-inventor-to-file system, a change that will impact medtech companies’ patent application filing practices. This change takes effect 18 months after the bill’s enactment. A first-inventor-to-file standard grants patents to inventors who first filed a patent application with the USPTO, whereas the current system grants patents to the first inventor, regardless of which inventor filed a patent application first.

First-inventor-to-file introduces several benefits to the patent system and, in turn, to medtech companies as well. First, itharmonizes the U.S. patent system with the patent systems of most other countries that also use a first-inventor-to-file rule. This synchronization simplifies the patent process and reduces confusion over foreign filing practices. Second, a first-inventor-to-file system provides clear standards for dispute resolution regarding questions of inventorship. Thus, medtech inventors no longer will need to depend on clearly kept records and lab notebooks to demonstrate and defend originality of an invention. Third, the new system encourages inventors and companies to file their patent applications quickly rather than rely on the U.S. 12-month grace period for public disclosures. This emphasis on a faster filing timeline benefits medtech companies because of the rapidly evolving and short life spans of much of the medtech industry’s technology and products.

Despite these benefits, the first-inventor-to-file system carries several drawbacks, particularly to small and early stage medtech companies. The most visible result of the new system will be an increase in the number of applications filed. Inventors will need to race to the patent office to stake priority claims before their competitors, a result that favors large, well-established companies with resources to file applications quickly and often. Another impact of a first-inventor-to-file system is that it places pressure on inventors to rush to file applications, potentially resulting in weaker, less-detailed applications that may be filed before the technology is fullyunderstood. To counter this, medtech companies should file applications that not only cover their core technology but also future improvements and alternative

embodiments. This will prevent competitors from obtaining design-around patents. A further disadvantage under the newsystem is the need for limited disclosure of an invention before the application is filed. Particularly relevant to startup firms,companies seeking venture capital funding will need to be guarded about what and how much they disclose. Similarly, inventors in university and research settings will need to be warier about funding options and collaboration among colleagues.
The first-inventor-to-file system thus presents several new opportunities and challenges to medtech companies.