“First to File” – Already a Practical Reality for Many US Applicants?

The proposed change to “first to file” in the USA is serious, fundamental, and deserves the level of scrutiny it’s presently receiving in many forums.

Indeed, the first blog post by David Kappos as USPTO Director commented specifically on this issue, showing he appreciates its importance. (Poor guy, he then got quickly criticized on a variety of other blogs…)

However, we believe the storm generated by this proposal is a distraction for many applicants, and here’s why: in practical terms, anyone intending to file overseas (whether via direct filings or the PCT) must already behave as if they are operating under a “first to file” system.

“First to file” is the basis for virtually every other country’s patent system. Moreover, most countries apply an absolute novelty standard, with no grace period. As such, to obtain the benefit of an early filing date for a PCT or foreign application under the Paris Convention, it is necessary to file an early application in the USA.

We suspect the “first to file” storm will thunder on for some time. In the meantime, US applicants planning to file overseas should consider whether “first to file” is already a practical reality for them.


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