Speed: A Good Thing for Thoroughbreds and for Patent Applications
Updated: Jan 27
Pet Patents & Policy
How do you know if a thoroughbred will grow up to be a superstar athlete on the race track? One woman's invention helps provide the answer. Dr. Emmeline Hill discovered methods for unlocking genetic information about a horse by examining sequence variants of the equine myostatin gene. Her inventions are protected by U.S. Patent Nos. 9,249,470 and 8,771,943; and sold in genetic test kits from Plusvital to help predict factors such as a horses' height, speed, and whether it may be better on dirt tracks or turf tracks. The genetic test results can be used to inform thoroughbred breeding and training efforts.
Here's another connection between horse racing and patents - the patent application process is like a horse race because the fastest inventor to file a patent application for their invention is the winner when more than one inventor comes up with the same innovation at around the same time. The "race to the patent office" refers to a need to be the first to file a patent application for your invention before anyone else does.
In the US, it used to be possible to prove that you invented something first, and therefore were the rightful patentee even if someone else filed a patent application before you submitted your patent application. So the amount of time spent writing a thoroughly researched and well-written patent application did not affect your patent rights.
But a change in the law in 2013 made the U.S. a "first-inventor-to-file" (FITF) country, in line with the practices of the rest of the world. FITF is a legal concept and means that that if Inventor A filed a patent application for protection of an invention and Inventor B invented before A but filed a patent application after A, Inventor A has the right to grant of the patent if the invention is patentable. This means that there is now a good reason to write and file a patent application more quickly.
Striking a balance between the need for speed and the need to fully describe your invention is possible by filing a provisional patent application. The provisional application has fewer requirements, and is a temporary one year place holder until a full (regular) utility patent application is filed. During the one-year life of the provisional application, more details can be worked out and added into your regular patent application. Seems complicated? It can be, so work with a licensed patent attorney who can advise you on the best strategy to navigate the U.S. Patent & Trademark Office's regulations to win your race to the patent office!