First-to-File and the Speed of Technology Evolution

The new first-to-file mantra is “File early.”, “File often.” But I say, “How early?”, “How often?” Who needs to be rushing to the patent office as fast as they can, and who needs to be better prepared before they file in the first place.

An important consideration is how fast the technology in your field is evolving. A useful measure of how fast technology is evolving is the age of the prior art is that is currently being cited against patent applications in your field. If young art is being cited, your field is moving fast. If old art is being cited, your field is moving slow.

I took a look at several random samples of patent applications currently or recently examined to see how young the prior art was that was being cited against them. These random samples were divided into several fields of technology. There were 50 applications in each sample. The youngest art that was most recently cited against an application’s independent claim was identified. This was done by looking at the file wrappers available on the USPTO’s public PAIR web site.

I defined the age of a reference as the effective filing date of the application minus the effective filing date of the reference. If a patent application had an effective filing date of January 1, 2008, for example, and the prior art being cited against it had an effective filing date of January 1, 2007, then the art was one year old as of the filing date of the application.

Here’s what the prior art age distribution looks like for a random sample of 50 social network patent applications. These applications have the phrase “social network” in them. They generally fall into the classes of computer implemented inventions, such as 455, 705, 707 and 709.

22% of social network patent applications are filed within one year of the youngest prior art cited against them. So speed of filing counts. If these applications had been filed a year earlier, then 22% of them would have avoided the youngest prior art cited against their independent claims. The applicants would have had correspondingly broader claims allowed. They would not have had to argue or amend around this prior art or abandon their applications altogether.

Not all fields of innovation are moving as fast as social networks. Here’s how a variety of different fields compare to each other.

This graph shows the percent of applications that had prior art cited against them that was one year old or less. Examples of major filers in the different fields are also shown. These include Easton Sports for baseball bats, GE for wind turbines, Ohio State or DNA, Google for e commerce, American Express for business methods, and Facebook for social networks.

The more slowly evolving fields were Baseball Bats and Wind Turbines. The average age of the youngest art cited against these applications was 10 to 15 years old. Some references were even 100 years old. The maturity of the art suggests that applicants should make sure their inventions are fully developed and their prior art searches are thoroughly performed before they file. There is no point in rushing to the patent office only to have a 100 year old reference shoot you down.

The mid speed fields were DNA and e Commerce. A significant fraction of these applications have one year old art cited against them. Timely filings, therefore, are important. The speed of filing, however, appears to be leading to a fair amount of wasted effort. Applicants are having a tough time getting their claims allowed, especially in the field of e Commerce. Improved preparation before filing may help but it should not come at the expense of timely filings.

The high speed fields were Business Methods and Social Networks. 18% to 22% of these applications had one year old prior art cited against them. They also had a lot of secret prior art cited against them, with 20% to 30% of the youngest citations being unpublished at the time the applications were filed. This suggests that applicants in these fields should file as fast as they can and then continuously keep watch for newly published patents and patent applications that might have been filed before they did. That way, they won’t be blindsided when an examiner cites one of these references against them.

First-to-file is coming. Steps can be taken now, however, to get ready. Measuring the age of the prior art currently being cited against patent applications in your field will help you judge just how fast you need to file. Looking at how difficult it is to get patents allowed in your field will help you judge how thoroughly you should prepare before filing. Seeing how much secret, unknowable prior art is ultimately being cited in your field will indicate how important it is to keep watching for newly published prior art that was filed before you did. Balancing all three will be important for your success in the new first-to-file regime.