In accordance with provisions of the America Invents Act, the U.S. patent system will transition to a first to file framework in March 2013. As stakeholders across the intellectual property community debate the merits of this move prior to its enactment, some are beginning to suggest that the legislation may not serve its expressed goals of protecting inventors and fostering innovation.
The impetus for these changes came, in part, as a response to prior art controversies that have complicated patent approval and prosecution processes.
"With first to invent you run the risk of going through the patent process and, at any time, someone can say 'I thought of that two years ago, here's my notebook,'" product design executive Louis Foreman recently explained in an interview with the New York Times.
But while first to file is expected to provide firms and investors with clear perspective on an invention's market standing, according to the Times, there may be several practical limitations to the model.
Invention disclosure can be a particularly thorny issue in the healthcare sector, for example. According to Genetic Engineering & Biotechnology News, rewarding researchers who are the first to file may indirectly inspire a patent team to submit an application before the implications of a medical discovery are fully understood. Additionally, patent review boards may have to rely on subjective, "sound prediction" standards to certify patentability instead of waiting years for clinical trials to support inventors' claims.