Are the U.S. Patent Priority Rules Really Necessary?

Authors

Colleen Chien, Santa Clara University School of LawFollow
Mark Lemley, University of California at Berkeley School of LawFollow

Document Type

Article

Publication Date

2003

Abstract

In this Article, we study U.S. Patent and Trademark Office (“PTO”) interference proceedings and court cases in which the parties dispute who is first to invent. We find that the first person to file is usually, but by no means always, also the first to invent. In over 40% of the cases, the first to invent is last to file. We also find that the long-standing rule that discriminated against foreign inventors by requiring proof of inventive activity in the U.S. had surprisingly little effect on outcomes; that a large number of priority disputes involve near-simultaneous invention; and that the vast majority of such disputes could be resolved without reliance on much of the evidence the law permits. Finally, we study the role of small inventors to see whether they are disproportionately the beneficiaries of the first to invent system. While the evidence is mixed, it does not appear that small inventors particularly benefit from the first to invent system.

Automated Citation

Colleen Chien and Mark Lemley, Are the U.S. Patent Priority Rules Really Necessary? (2003),
Available at: https://digitalcommons.law.scu.edu/facpubs/70