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ARTICLE · 16 FEBRUARY 2021

Record-Keeping And Proving Inventorship

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The American Invents Acts triggered a transition in the U.S. from a first-to-invent system to a first-inventor-to-file system. The importance of proving inventorship did not diminish with the transition, however.

United StatesIntellectual Property
Adriana Burgy
Adriana Burgy
Stacy Lewis
Stacy Lewis
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The American Invents Acts triggered a transition in the U.S. from a first-to-invent system to a first-inventor-to-file system. The importance of proving inventorship did not diminish with the transition, however. 35 U.S.C. 101 still reads: "Whoever invents or discovers..." In fact, proving inventorship will remain important for ownership, best mode, eligibility for prior art exceptions, duty of disclosure obligations, derivation proceedings, and antedating an asserted prior art reference in AIA post-grant proceedings, even after the period of coexistence between pre-AIA and AIA law ends on March 15, 2034 (and maybe 2039 with PTE. Consequently, keeping accurate, careful records of invention as evidence of conception and reduction to practice was, and remains, crucial.

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