First-to-File: A Game-Changer in US Patent Law

The shift in patent law from First-to-Invent to First-to-File came about over a decade ago, but still leaves many inventors scratching their heads. Is First-to-File really as simple as “first come, first served”?

This article aims to help understand First-to-File a little better. 

The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision transitioned the United States from a First-to-Invent system to a First-Inventor-to-File system (aka First-to-File), and has had a profound impact on inventors, determination of patent ownership, and the patent process.

First-to-Invent

Prior to implementation of the FITF provision, First-to-Invent was the standard in the United States. Under First-to-Invent, the patent (assuming an invention was patentable) was awarded to the inventor who could prove they were the first to conceive and develop the invention, regardless of who filed the patent application first. For example, if two inventors independently conceived the same invention, the one who could prove prior inventorship would be awarded the patent, even if they filed their application later. The second inventor to file would have to prove that they were the first to invent and did not unduly delay filing. Thus, the First-to-Invent system required inventors to maintain records of their invention process, including dates, sketches, and witness testimonies, in order to establish their priority in case of a dispute. 

First-Inventor-to-File

The First-Inventor-to-File system, which is now used in the United States and most other countries, awards the patent to the first inventor who files a patent application, regardless of who actually invented a device first. In the example above, the inventor who filed their patent application first would have priority, regardless of who invented it first chronologically. Since there is no burden on the first filer to prove the date of their idea conception, this First-to-File system improves speed and efficiency in the patent process. The US Patent and Trademark Office (USPTO) can process applications with fewer complications. Plus, the FITF provision better aligns with international patent practices, making it easier for US inventors to obtain patent protection in foreign jurisdictions. 

Advantages and Disadvantages

Both systems have their advantages and disadvantages. 

The First-to-Invent system was seen as more equitable to individual inventors and small businesses who may not have had the resources to file a patent application as quickly as larger companies. Larger entities might have the funds to file a patent before an individual inventor or small business could justify or afford the expense. Under First-to-Invent, the actual filing date was irrelevant, giving the smaller entity a better chance at controlling the IP. However, First-to-Invent often led to complex and costly legal battles to determine inventorship, possibly negating the fairness factor. 

The First-to-File system is simpler and more predictable, reducing legal disputes and promoting faster dissemination of knowledge and ideas. However, it can disadvantage individual inventors and small businesses who may need more time and resources to develop their invention and/or file a patent application. A better-financed party, which honestly conceived of the invention independently but later than the original inventor, could file a patent application earlier than the first inventor and control the IP. 

The FITF provision does provide for some exceptions. For example, if a later filer can prove that an earlier filer derived the claimed invention from them without authorization, the later filer can establish priority through a “derivation” proceeding. This is basically a trial or appeal to determine whether an invention was improperly derived from another, but the evidence must be substantial with a high burden of proof. Due to the difficulty of proving derivation, these proceedings are rare and considered to be a last resort compared to regular patent challenges such as interferences or post-grant reviews. 

Implications of the Change

The shift to First-to-File has had several implications for inventors and the patent system. FITF has placed much greater emphasis on patent filing strategies. Inventors must now act quickly to file a patent application as soon as they have a viable invention. Consequently, this has led to an influx of application filings, especially initially, which caused increased patent backlogs and delays in the examination process. Beneficially, the change has encouraged greater international harmonization of patent law, as most other countries already use the First-to-File system. 

Conclusion

The shift from First-to-Invent to First-to-File was a significant change in the United States patent system. While the new system offers greater clarity and efficiency, it also places a greater emphasis on speed and strategic patent filing. To adapt to this system, inventors need to be more proactive in protecting their intellectual property; they will want to consider filing on key inventions as soon as possible. Inventors may want to consider utilizing provisional patent applications, which offer a quicker, less expensive, and less formal way to establish an early filing date (i.e., priority date) and give inventors an additional 12 months to file a full formal, non-provisional patent application. 

Under FITF, procrastination on patent matters could lead to lost opportunity. With key innovations, it is probably wise to be “first come, first served.”

Editor's Note: Thanks to Bradley Griffin, Vice President - Product Development & Creative at Practicon, Inc., for providing insights that contributed to this article.

--
© 2025 Ward and Smith, P.A. For further information regarding the issues described above, please contact Ryan K. Simmons.

This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.

We are your established legal network with offices in Asheville, Greenville, New Bern, Raleigh, and Wilmington, NC.