"First-to-file" rule being looked at by Senate – to decrease the patent application backlog??

According to the Wall St. Journal today:


“Although the office has traditionally operated with a backlog, the pile has increased in recent years. Even though there has been a drop-off in applications during the recession, it hasn’t helped examiners catch up. One reason is that overtime has been cut, so examiners spend fewer hours processing applications. What’s more, because the office is entirely funded by user fees, the dropoff has left it with a budget gap.

“Patent rules haven’t changed significantly in five decades, despite many attempts by Congress.

“This year, a fragile compromise between pharmaceutical and technology companies on a Senate bill could make a difference. The bill would institute a “first-to-file” system that would award patents based on the date an application is filed, rather than on the date of invention was made.”


A first-to-file patent priority system. Wow.

That would match with much of the rest of the world’s patent practice, so it would go a long way toward harmonization of worldwide patent law. It is, though, a BIG break from the way the US has traditionally handled patent application priority, based on a first-to-invent system. Here’s the difference:

A first-to-file system is a race to the patent office. Whoever files first wins. The actual date of invention is irrelevant.

A first-to-invent system grants patent rights based on proof of the date of invention. The date of filing is the presumptive date of invention, but the inventor, should an application be filed by someone else on the same invention, has the opportunity to prove that she made the invention first and worked diligently on the invention until the date of filing. This is called an “interference.”

I didn’t know that there were so many interferences before the USPTO that instituting a first-to-file system would make a difference in the patent application backlog. While I’m all for a first-to-file system for reasons of international patent law harmonization, I think it’s folly to believe that instituting a “first-to-file” system would make the least dent in the patent application backlog.

So prove me wrong.