First to invent

The importance of an accurate and complete record of invention caimot be underestimated. The record of invention should serve as the basic document for estabUshing the date of conception and reduction to practice of the invention. The U.S. PTO issues patents to those who are first to invent. In a contest over inventorship, any available record of invention is submitted to the U.S. PTO to estabUsh proof of an inventor s rights. As of January 1, 1996, any inventor from a country belonging to the World Trade Organization may use such evidence before the U.S. PTO. Previously, this type of proof could be rehed upon only if the activity, documented in the notebook, record, etc, was undertaken in the United States. Similarly, activity undertaken after December 8, 1993 in Mexico or Canada may also be rehed upon to prove inventorship. 

Keep records that document when and what was invented. It is important that accurate records are kept showing your original sketches with a disclosure statement describing what and how your invention works. It is useful to have someone witness this disclosure document and verify the date that this invention took place. It is often during this step that the invention concept is either modeled (mathematical or physical or both) and tested. Thus, accurate records of these analyzes or test results should also be kept. In the U.S. it is the first to invent that will obtain a patent in the event of two individuals inventing the same thing. Keep the disclosure document secret until the patent application is submitted to the patent office. 

It should be noted that all other countries grant patents to inventors that are the first to submit patent applications to their respective patent offices. We are the only country the grants a patent to the first to invent (not the first to the patent office). How ever, in 2003 the U.S. may change to the first to the patent office method of granting patents. 

The sulfoxidation of aliphatic hydrocarbons is the easiest method for the synthesis of alkylsulfonic acids. Their sodium salts are widely used as surfactive reactants in technology and housekeeping. Platz and Schimmelschmidt [1] were the first to invent this synthetic method. Normal paraffins (Ci4-Cig) are used for the industrial production of alkylsulfonic acids [2-4]. Olefins and alkylaromatic hydrocarbons do not produce sulfonic acids under the action of sulfur dioxide and dioxygen and retard the sulfoxidation of alkanes [5-9],... 

The USA, unlike many other world regions, also adopts the first to invent principle. Put simply (although patent disputes are rarely simple), if two inventors file similar patents, the patent will be granted to the one who proves that he/she was the first to invent the product , even if he/she was not the first to file for a patent. Proving you were the first to invent can be complex and usually hinges around the availability of full and detailed laboratory notebooks or other records as to how and when the invention was made. 

USA operate a first to invent system rather than the first to file system operated in other countries. 

The US first to invent system allows a person to obtain a US patent if he can prove that he made the invention prior to another party who filed an earlier patent application for the same invention. Proof of invention can involve submission of lab note books, making diligent record keeping extremely important to preserve US patent rights. 

The first to invent a usable system was Jolm Dalton, an English scientist. The invention was almost forced upon him. 

The First-to-invent Principle of the United States and Its Consequences on Laboratory Notebook Keeping... 

From time to time, different persons invent the same subject matter and intend to protect it by patent rights. In these cases, two or more patent applications are filed by the inventors claiming substantially the same invention. Most countries in the world apply the first-to-file principle to determine who is entitled to the patent. In contrast, the United States do not give priority in case of conflict to the first applicant, but to the first to invent. Interference proceedings are instituted to determine who is the first inventor and consequently entitled to the patent (see 35 U.S.C. 102 g (1)). The parties involved in such a proceeding may provide evidence of facts to prove their date of invention. 

Only one party can be awarded a patent to an invention (die same invention cannot be patented twice), and die prize usually goes to the party that can establish that it was die first party to invent the contested subject matter. This is a consequence of die United States being a first-to-invent country (more will be explained regarding this facet of U.S. law in Chapter 3). The first-to-invent system makes a provisional patent application less critical than if die United States were a first-to-file country like the rest of the world. However, filing a provisional patent application in the United States is still advantageous because any... 

Procedurally, an interference occurs when one or more claims in a patent application is substantially the same as one or more claims in another patent application with certain time bar limitations when the action can occur. These time bars are a consequence of 102(b), which sets a time limit on the first-to-invent aspect of U.S. patent law. A later filed patent application that claims or could be drawn to claim the same subject matter as an earlier filed patent application or patent must be filed within 1 year of the time the earlier patent application was published or patented. If the later applicant files after the 1-year period, then the earlier art becomes 102(b) prior art that cannot be removed by proof of prior invention. As a practical matter, 102(g) prior art can be especially problematic because it can take the longest time to discover, and moreover, an interference can take significant time (and money) to resolve. 

A key element of 102(a) prior art is that it relates to the date of the invention by the applicant. For a 102(a) reference date to effectively block the applicant s work, the 102(a) event must have occurred before the date of the invention by the applicant. Flowever, the provisions of 102(b) provide an important limit to the first-to-invent rule. The section of prior art defined in 102(b) is referred to as the absolute bar because it limits how far one can go in antedating a prior art reference to prove earlier invention in the United States. Specifically, a patent for an invention cannot be obtained in the United States if the invention was patented or described in a printed publication (or in public use or on sale in this country), more than 1 year before the date of application for patent in the United States. Thus, even if the applicant made the invention before the 102(b) event, she will be barred from being granted a patent if she does not file the patent application within 1 year of that 102(b) event. Note that 102(b) does not contain the phrase by others as in 102(a). Thus if an applicant publishes her own invention more than 1 year before filing the application for patent, she will be barred by 102(b) from being eligible to be granted a patent in the United States. Likewise, if a 102(b) event by another occurs, apatent applicant in the United States will not be able to antedate the 102(b) event. 

Competing Applications. For the EPO patent rights belong to the first to file. In the US it is the first to invent, decided by assessment in interference proceedings. Hence the importance of keeping accurate dated records of work leading to the invention, e.g. laboratory notebooks. 

Structure oriented design refers to projects aimed at the creation of molecules with unusual structural characteristics not necessarily related to some useful property. This brings to mind a plethora of classical studies such as the previously discussed syntheses of cyclooctatetraene, Dewar benzene, or asterane. More recent examples include the syntheses of the dodecahedrane and tetrahedrane frameworks. The goal of the investigations in this area is first to invent and then to synthesize certain non-trivial molecules having unique structural features. This uniqueness very often refers to a novelty in the general shape of the molecules (as for dodecahedrane or catenanes), which are otherwise constructed in accordance with the classical concepts of structural theory. At the same time, quite a number of unprecedented structures have... 

Under Section 102(a), a patent claim is invalid if the claimed product was known or used by others in the United States, or was patented or described in a printed publication in the United States or a foreign country before the product was invented by the paten-tee. To anticipate a claim under Section 102(a), the challenger must show that the claimed product was publicly available before it was invented by the innovator, thus establishing that the patent owner was not the first to invent the claimed invention. 

The flame ionization detector (FID) is, by far, the most commonly used detector in gas chromatography (GC) and is probably the most important. It is a little uncertain as to who was the first to invent the FID some gave the credit to Harley and Pretorius [1], others to McWilliams and Dewer [2]. In any event, it would appear that both contenders developed the device at about the same time, and independently of one another the controversy had more patent significance than historical interest. The FID is an extension of the flame thermocouple detector and is physically very similar, the fundamentally important difference being that the ions produced in the flame are measured, as opposed to the heat generated. 

Unlike the rest of the world, US patent practice is a first-to-invent rather than first-to-file system, the argument being that the Constitutional basis for the patent system was to secure rights for inventors not for hasty filers. This occasionally leads to a quasi-judicial proceeding known as an interference. 

U.S. patent law, for example, is notable for its difference from the patent laws of certain other countries in the patentability of pharmaceutical compositions and medical procedures (both patentable in the United States), and in cases where competing inventors apply for conflicting patents on the same invention (the United States awards the patent to the first to invent, while most other countries award the patent to the first to file, although, as of the date of publication of this chapter, legislation is pending in the United States to change the standard to flrst-to-flle). 

Throughout most of the world outside the United States, patents are granted to the first to file rather than the first to invent. In such countries, the failure to file quickly can result in loss of valuable patent rights. Moreover, if others independently make the same invention and obtain a patent, the inventor who files late may be prevented from using the very technology upon which vast sums and significant human resources were spent. 

U.S. patent law establishing entitlement to a patent in the case of essentially simultaneous invention is different from the law of substantially all other countries throughout the world. Nearly all countries award the patent to the first party who files a patent application (i.e., the first-to-file rule) (12). The United States, however, follows the first-to-invent rule whereby, at least in theory, the first to invent is generally entitled to the patent, even though he or she was not the first to file a patent application. Thus, it is possible that one party (i.e., the first to invent) who loses the race to the PTO may be entitled to patent protection in the United States, whereas another party (i.e., the first to file) may be entitled to patent protection for the... 

With the first-to-invent system in the United States, it is sometimes necessary to determine which of two or more inventors (or groups of inventors) first invented the subject matter that is claimed in common by the parties. Interferences are the proceedings within the PTO for making such determinations. These proceedings, which are overseen by senior examiners within the PTO, are ultimately decided by the Board of Patent Appeals and Interferences in the PTO. The party who first conceives an invention and first reduces it to practice will normally be awarded priority and will be awarded the U.S. patent (142). This is not the case, however, if another party, who reduced the invention to practice at a later date, can prove that he or she was the first to conceive the invention and proceeded diligently to reduce it to practice from a time before the other party s date of conception. The diligence of the first to reduce the invention to practice is normally immaterial in the priority contest. 

The Act also contains incentives for prompt filing of patent applications. An invention becomes unpatentable, even if the applicant was the first to invent it, if the invention was patented or described in a printed publication anywhere in the world, or was in public use or on sale in this countJy, more than one year prior to the date of the United States patent application. 35 U.S.C. 102(c). 

Maintaining new product information as trade secrets can pose commercial risks when others may seek patents if they develop similar products. Exactly the extent of this risk is uncertain. Section 102(g) of the Patent Act, 35 U.S.C. 102(g), provides that a person may obtain a patent over an invention, even if he was not in fact the first to invent, if the first inventor has concealed or suppressed the invention or otherwise not acted diligently. Thus, a second inventor may be able to obtain patent protection over an invention when the first inventor has relied on the trade secret doctrine for his protection. The reported cases to date have not addressed the question as to whether the second inventor, having obtained a patent, can thereafter sue the first inventor for infringement. 

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