An Overview of U.S. Patent Law's First-to-Invent System

美國專利法上先發明主義之檢視

以專利法制而言,現今世界上多數國家均採先申請主義,唯獨美國採先發明主義。雖然其法制繼受自英國,此先發明主義乃美國所自創,其創設理由並非為保障小型企業而設,而是其聯邦與州二元管轄之設計及自然權利之倡議所致。歷年來,國際間持續要求美國與世界上其他國家調和,將其先發明主義改為先申請主義,其國會亦於過去十餘年來,提出類似之專利修法法案,但美國之先發明制度至今並未做重大變更。美國先發明主義包括兩大機制,其一為新穎性之決定,其二為優先排序之決定。前者以發明日為準,後者指若能將發明概念先具體化至可付諸實踐程度者,得獲准專利;除非,付諸實踐在後者,能證明其構思在先,且於先付諸實踐者完成構思稍前之時間點,至構思在先者付諸實踐之時間點間,存有相當之努力,始得獲准專利。然而,認定美國是完全的先發明主義國家之說法並不周延,因為美國專利制度尚包含先申請主義之機制。因為其中可付諸實踐者,除了實際可付諸實踐者外,亦包括以申請日為準之推定可付諸實踐者的機制,故其實為一綜合先發明主義與先申請主義之國家。惟值得注意者,其最近提出之「2010年專利法修正案」已跳脫單純先發明主義或先申請主義之二元選擇,而提出「先發明者先申請主義」,其乃混合該二主義之改良主義。

Most countries have adopted the first-to-file system, with the U.S. unique in having a first-to-invent system. Notwithstanding the historical tie between the U.S. and England, however, there was no rule of priority in England around the eighteenth century, so the U.S. had independently established the first-to-invent system. As a result of the dual sovereignty of state and federal governments, and under the influence of natural law concepts, the U.S. established a first-to-invent system. While the U.S. still embraces its first-to-invent system, other countries and international organizations continue to demand the U.S. to convert to the first-to-file system. And in the U.S., several proposals to harmonizepatent law with the rest of the world have been introduced over the past decade, but none has yet to include conversion from the first-to-invent rule of priority. The Patent Reform Act of 2010 also dramatically changes this landscape. U.S. patent law's first-to-invent system involves two primary functions, i.e., the novelty and priority determination. Under the U.S.' first-to-invent system, the first of many inventors to reduce an invention to practice around the same time will be the sole party to obtain a patent, unless another was the first to conceive and couples a later-in-time reduction to practice with diligence from a time just prior to when the second conceiver entered the field to the first conceiver's reduction to practice. Labelling the U.S. patent practice as first-to-invent is misleading, because it in fact contains the mechanisms of the first-to-file approach as well. This mechanism can be seen in the rule of priority, in that the first person who reduces the subject matter to practice, either actually or constructively, is deemed the first inventor. Thus first inventorship status can be established through constructive reduction to practice, referring to the filing date instead of the invention date. Therefore, the U.S. Patent Law system is not a pure first-to-invent system, but rather a mixed system with features of both first-to-invent and first-to-file approaches. Additionally, the recently enacted Patent Reform Act of 2010 has further modified the first-inventor-to-file system.