ABA Urges Congress To Adopt First-Inventor-to-File Rule as Centerpiece of Patent Law Reform

WASHINGTON, D.C., April 19, 2005 — The American Bar Association is urging Congress to adopt a first-inventor-to-file rule as it reviews proposals for reforms and improvements in U.S. patent laws.

In making a case for awarding the right to patent to the first inventor to file, ABA Section of Intellectual Property Law Chair William L. LaFuze said in remarks prepared for delivery Wednesday before the House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property, “At its core, the existing patent law, which is best described as a ‘proofs of invention date’ system, is unacceptably expensive, complicated and unpredictable. The U.S. patent law today requires that rival inventors can be forced to fight for the right to patent an invention in a so-called ‘patent interference.’”

He noted that the right to patent can be lost “solely because of an inability to afford the enormous financial burdens necessarily imposed by the U.S. proofs-based patent interference system,” and that the current system particularly disserves independent inventors.

LaFuze also noted that the United States stands alone in the world in awarding a patent based upon a “proof of invention date” system.

“In stark contrast, the fate of the ‘first and true inventor’ is typically far better outside the United States. The first and true inventor – who by definition always has the ability to be first to file for a patent – can secure the award of the right to patent by the simple act of seeking the patent before any later, rival inventors make the same invention, much less are able to file for a patent on it.”

Adoption of the first-inventor-to-file rule would be consistent with changes sought by the United States in discussions seeking greater global harmonization of patent laws, he said.

With more than 400,000 members, the American Bar Association is the largest voluntary professional membership organization in the world. As the national voice of the legal profession, the ABA works to improve the administration of justice, promotes programs that assist lawyers and judges in their work, accredits law schools, provides continuing legal education, and works to build public understanding around the world of the importance of the rule of law in a democratic society.