First to File: Patents for Today's Scientist and Engineer

Chapter 1The First-to-File Rule: Evolution and Application

Senator Patrick Leahy and Representative Lamar Smith, the Congressional sponsors of the America Invents Act (AIA), when considering the volume and intensity of the debate that preceded the signing of the Act into law in 2011, may have found it amusing, if it occurred to them at all, that the first U.S. patent examining body included among its three members the Secretary of War, Henry Knox.¹ While Mr. Knox, who has since come to be recognized as the father of American army artillery, possessed considerable war expertise, it is doubtful that this expertise was a factor in his being appointed to the Patent Board, and it is safe to say that patents have never been at the center of a military war. Nevertheless, patents have generated controversies at various times since their introduction into the United States, and possibly the most hotly debated controversy was the one over the proposal made 200 years after Mr. Knox assumed his duties as an examiner, that is, that patents be awarded on a “first-to-file” basis rather than the long-standing policy of “first-to-invent.” Those opposing the proposal argued that, among other perceived evils, it would reverse 200 years of precedent, and vigorous arguments both for and against the proposal were expressed not only by various interest groups within the United States but also between the United States and its allies. The proposal passed however, and it, together with the other provisions ...