One of the central pieces of The Patent Reform Act of 2011 (“S.23”) now under consideration in the U.S. Senate is the change from the current first-to-invent (“F2I”) system with a first-inventor-to-file (“F2F”) system. In the U.S., as an illustration of the F2I system, even if the first inventor files his/her application after a later and independent inventor, the F2I party has the right to the patent as long as he/she can prove that theirs is the earliest invention at an “interference proceeding.” With the changes incorporated as part of S.23, in this example the later, but more diligent(?), inventor would win the rights to the patent thanks to the F2F system.
This change would bring the U.S. system into accord with most patent systems overseas, but the transition would bring about several changes to the strategy of patent filing and the relative value of maintaining inventions secret a a competitive tactic. For a thorough and systematic analysis of the nuances and combinations of timing and prior art disclosures in patent prosecution under S.23, we recommend a close read of the guest post on the Patently-O blog by Prof. Ann McCrackin and JD candidates Brodsky and Chiluwal.
The possibility for derailing this part of the Reform has apparently closed today (March 3, 2011), as Sen. Feinstein’s amendment on the issue failed to get the necessary support, as Gene Quinn has reported.