July 11, 2011 – As the America Invents Act has now passed in both the Senate and House and is approaching enactment, many independent inventors and smaller businesses are worried about one of its provisions: the change from a "first to invent" to a "first to file" patent system.
Becoming a first to file patent regime means that the patent for a given invention will go to the first inventor to file a patent application - regardless of whether another inventor can prove that they developed the invention first.
"The first person to invent it should be the one to profit from it — that is kind of an American feeling, and it kind of feels like it favors the little guy," said George White, a patent agent who is also the president of the nonprofit Inventors Forum in Orange County, CA.
First to file creates a few problems for the small business or independent inventor, according to many patent experts who are critical of the change. First, it favors larger businesses who are better equipped to win the race to the Patent Office. (Small inventors don't always have the resources to file applications right away, and benefit from the one-year grace period available to them under the current first to invent system.)
Second, it makes it less safe for an inventor to show their invention to a potential investor or customer - and makes the use of nondisclosure agreements critically important.
"The problem you've got is, if you don't get someone to sign [a nondisclosure agreement], if they go use [your invention], you're dead," said attorney Yar Chaikovsky, who is with the McDermott Will & Emery law firm in Menlo Park, CA.