The first to invent policy is a controversial patent law doctrine only used in the United States to decide which inventor shall be awarded a patent in case two or more of them reached the same invention independently at about the same time. Based on this policy, under limited circumstances, Tom, the first to invent, can defeat Jerry, the first to file, in a possibly costly and tedious legal proceeding.
This policy regarding multiple parties' priority rights is only applicable to unrelated independent inventions. If Tom and Jerry worked together to create the invention, neither party can file patent application without naming the other one as a co-inventor. If incorrect inventorship (nonjoiner or misjoiner) is found with deceptive intent, the whole patent would be invalidated.
In the U.S., most inventors do not encounter first to invent problems. The United States Patent and Trademark Office (USPTO) usually works exactly the same as its global counterparts. The first to invent doctrine is only applicable with:
- two pending applications, or
- one pending application and a patent issued within a year of the pending application's filing date.
In an imaginary world, two inventors are secretly working on the greatest sure-kill mousetrap. Tom, the diligent first inventor, invented it. But he did not file the patent application. He wanted to improve it so it could be mass produced by ACME.
Jerry, working independently from Tom, developed the same invention shortly after Tom's success. Jerry had no use for the invention, but he wanted to bar anyone else from obtaining a patent on it. He hired his fast running Mexican cousin to deliver the patent application to and became the first to file an application.
Both of them kept the invention as a trade secret up to this point.
If Tom notices Jerry's move in time, he may prevail in an interference proceeding filed in the USPTO. If Tom disclosed the invention to the public before Jerry's filing, he can claim prior art and use it to invalidate Jerry's patent (Tom would have, at this point, a year to file a patent application. If he failed to file within this one-year grace period, the invention would enter public domain). If he fails to notice Jerry's move before the above-mentioned deadline, he can do nearly nothing to Tom. If he uses the invention secretly himself, he is not allowed to raise so-called "prior use right" as a legal defense in a patent infringement lawsuit because the subject matter is not a business method patent. He can try to negotiate a license from Jerry or catch the mouse in another way not covered by Jerry's patent.
It is usually hopeless for a copycat to forge evidence of first invention to hijack an issued patent or publicized patent application.
