So what do I need to know?
In a first-to-file system, the first person to file a patent application will have the rights to that invention. In other words, the first person to claim an invention with the USPTO is recognized as the inventor.
Under this new system, the process is similar to going to the court house to file a document such as a marriage certificate or a deed on your new house. Even though you are married in a church or you have completed a real estate transaction until you file the proper documents with the court, your marriage or property right is not recognized by the state. This is commonly referred to as race notice. Race notice is a form of constructive notice, wherein if you are the first to file with the government, then you effectively inform the rest of the world that you have an invention. With the AIA, anyone else can claim the same invention until you file with the USPTO. Should you delay filing, then you are susceptible to the real possibility that someone else may claim your idea. This form of statute compels and, in a way, rewards, inventors to disclose their inventions to the public in order to make contributions to society. Otherwise, an inventor may sit on an idea for an extended period of time and not even utilize the idea.
How does this affect me with my application, whether it is for a provisional patent application or a nonprovisional patent application?
In 2011, the America Invents Act (AIA) was signed into law by President Obama. This moved the country’s first-to-invent system to a first-to-file system. Previously, if you invented something, it meant that you had the rights to the invention and could file the idea with the USPTO at your leisure. This is a simplified example, but as long as you invented something, and if someone attempted to claim they invented the same idea after you, you were protected. With the AIA, there is a very important change in the process.
An example of the differences between the first-to-invent and first-to-file systems:
Under the previous first-to-invent system (the AIA is not in effect):
On January 1, 2013, an inventor creates a new invention.
On January 15, 2013, a separate company independently creates the same invention.
On February 1, 2013, the company files a nonprovisional patent application disclosing the invention.
On February 15, 2013, the inventor files a nonprovisional patent application with the USPTO.
Under the above facts, the inventor will be protected under the previous first-to-invent system by proving that he or she did create the invention prior to the company.
Under the first-to-file system (the AIA is now in effect):
On January 1, 2014, an inventor creates a new invention.
On January 15, 2014, a separate company independently creates the same invention.
On February 1, 2014, the company files a nonprovisional patent application disclosing the invention.
On February 15, 2014, the inventor files a nonprovisional patent application with the USPTO.
Under the above facts, the inventor will most likely be precluded from obtaining patent protection because the company filed an application with the USPTO before the inventor. This situation illustrates that an inventor contemplating or procrastinating to obtain patent protection can very likely lose the ability to do so.
Anything else I need to know?
If you filed an application with the USPTO prior to March 16, 2013, when this section of the AIA became effective, then you still retain the rights and privileges under first-to-invent system.