In March of 2013, the America Invents Ac t (AIA) implemented the “first-inventor-to-file” patent system, which replaced the “first-to-invent” patent system. This change worried many, making them feel that the true inventor was now trumped by the effective filing date for a patent. Many still assume that under this new system, if someone steals an idea from the true inventor and files a patent application first, the true inventor can no longer obtain a patent for their own invention.
Fortunately, this is not the case. Under the “first-inventor-to-file” patent system, patent applicants must still sign an inventor’s oath or declaration. This oath must contain the following statements:
The application was made or authorized to be made by the affiant or declarant.
The individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
Bottom line, only the true inventor, or an attorney acting in their behalf, can legally file for patent protection on their claimed invention.
So, what happens if someone steals the true inventor’s idea, asserts they are the original inventor in the inventor’s oath and files for patent protection first? The law clearly states that any willful false statement made in the inventor’s oath is punishable under 18 U.S.C. 1001 “by fine, imprisonment of no more than five years or both.” In addition, when a supposed inventor files a patent application with deceptive intent and it is thereafter proven that they are not the original inventor, the patent will become invalid and unenforceable.
Of course, any inventor who finds himself in such a situation will need to provide clear and convincing evidence that he or she is indeed the true and original inventor of the application in question. If they are able to do so, they will then be free to file a patent application for their invention as the true inventor.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida. She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.