Toshiko Takenaka, Rethinking the United States First-to-Invent Principle from a Comparative Law Perspective: A Proposal to Restructure § 102 Novelty and Priority Provisions, 39 Hous. L. Rev. 621 (2002), https://digitalcommons.law.uw.edu/faculty-articles/349
Houston Law Review
first to invent
This Article first examines the novelty and priority provisions of first-to-file countries, and then compares them with U.S. counterparts to identify major differences and determine why these differences result. The Article discusses the origins of the complex structure adopted by § 102 to define prior art and the difficult interpretation given to terms used in the novelty definition. This Article then reviews the USPTO's practice of the novelty examination and the priority determination in interference proceedings. This review confirms the first-to-file patent professional's perception that the United States, in fact, follows the first-to-file principle, although it also provides an exception to first-to-invent. Further, this Article will reveal that labeling U.S. novelty and priority rules as a first-to-invent approach not only is misleading, but the well-established perception of favoring small inventors does not reflect the reality of USPTO practice.
To protect U.S. inventors from being misled by false perception and labeling and to reflect the USPTO's examination and interference practices and thus make clear the first-to-file principle the USPTO follows, this Article proposes a revision of § 102 by an ad hoc exception showing an invention date with corroborative evidence. Modeling the simple structure used to define novelty and priority in first-to-file countries, the revised § 102 this Article proposes is simple and easily understood by inventors without any knowledge of U.S. case law. To simplify the examination practice further, this Article concludes with a proposal to limit the amount of time and the type of applicants who can establish priority.