Patent Reform Act of 2007: Preliminary Notes and Comment Part I

This post provides some initial notes from my first read-through of the proposed legislation. More information regarding the proposal is available at an earlier post here.

  1. Top Secret Development: The proposed legislation was developed in-secret by a closed-group representing industry organizations.  As it turns out, however, the major big-industry players are not all on-board and neither are groups of would-be patent plaintiffs. The end-result is a bill that is heavily tilted toward providing additional avenues for challenging patent validity and for reducing the power of all patents.  In that sense, the Bill is a gift to potential defendants. In the end, the legislation is so one-sided that it is quite unlikely to move forward without a complete overhaul.
  2. No Grace Period?: The proposed first-to-file has been contentious for many years.  Proponents of the change talk about how Interference proceedings are an awful process and first-to-file avoids that problem. A first-to-file system automatically awards the patent to the first applicant who submits the patent application.  The proposed legislation, of course, does far more than ease resolution of interference disputes.  The proposal shifts all focus from an invention date to the “effective filing date” and in-the-process eliminates the US one-year grace period.  Notably, the grace period would still be intact for the inventor’s own disclosure. 
  3. Joint Research avoids Anticipation: The grace period is also still intact for disclosures made by the patent assignee — a provision clearly favoring companies with larger research-arms.  In addition, there is still a one-year filing grace-period for disclosures made by parties to a properly-written joint research agreement. 
  4. Public Use and On Sale Activity outside of the US would now be considered prior art.  This is probably justified by recently expanded extraterritorial effect of patent enforcement.
  5. Damages a new floor: The new damages proposal is very specific and sets a new (lower) floor for damages. Under the proposal, courts must conduct a reasonable royalty analysis focused at the “patent’s specific contribution over the prior art.”  The statutory language surrounding this analysis appears to be complex enough to occupy dozens of CAFC opinions explaining the proper methods of determining the economic value of the difference between the invention and the prior art.  Reasonable royalty does, however, remain only a floor — although according to the statute, it must now be calculated (even if going after lost-profits). (Jury Trial Issues?)
  6. Clear Path to Avoid Willfulness: Adios Treble Damages.  The patent community spends a considerable amount of time discussing willful infringement and the associated enhanced damages. The current patent statute, however, does not mention willful infringement allowing for additional theories for enhancing damages.  The amendment would limit treble damages only to cases where willfulness is found based on clear and convincing evidence of either (1) notice of how particular acts infringed particular claims or (2) intentional copying with knowledge of the patent or (3) continuing to sell the infringing product after being adjudge an infringer.  “Good faith” by the infringer avoids willfulness. Although the ‘rules’ regarding increased damages have been becoming ever more stratified, this statute removes the vast majority of the current leeway given to courts and juries.
  7. Bifurcation of Trials: Many defendants believe that juries are biased simply by hearing that they are accused of willful infringement. The reforms would bar a patentee from even alleging willfulness until after the patent has been found valid and infringed.
  8. Inter Partes Reexamination: Many patent litigators have warned clients against filing inter partes reexamination requests because of the litigation estoppel created by by 35 USC 315(c). That provision estopps later validity challenges on grounds that a third party “raised or could have raised” during the reexamination.  The Patent Reform Act would limit the estoppel to only issues actually raised — striking the “could have raised” language.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

101 thoughts on “Patent Reform Act of 2007: Preliminary Notes and Comment Part I

  1. … as a side note, the USPTO apparently disagrees with me, as evidenced by today’s final rule:

    “In addition, while only a small minority of applications are a third or subsequent continuing application, it appears that some applicants and practitioners have used multiple continued examination filings as a strategy to delay the conclusion of examination. The Office, however, considers such a strategy to be a misuse of continued examination practice. Specifically, the Office considers such a strategy to be inconsistent with an applicant’s and practitioner’s duty under 37 CFR 10.18(b)(2)(i) not to submit an application or other filing to cause unnecessary delay or needless increase in the cost of prosecution before the Office.”

  2. “It was interesting to see the big corporate stooges taking my name in vain.”

    LOL … No big-corporate stooge here. (I represent all sizes of clients, including solo inventors.)

    I was just having fun pointing out your virtually automatic “big business screws solo inventors” comments — which are almost as automatic as my “keeping a continuation pending throughout the 20-year patent term is a legitimate way to allow inventors to protect their inventions” comments.

    Congrats on shooting down patent reform. Some of those provisions were nutty.

  3. I dropped in and reviewed about two thirds of the drivel in this tread. It was interesting to see the big corporate stooges taking my name in vain. I have been busy with more important things, like laying the groundwork for the defeat of patent reform. We launched our torpedo at this big business crap which has been labeled as patent reform just a week and a half before the August recess of Congress. Corporate owned political hacks were caught flat footed. It seems they had illusions of passing patent deform out of the House before recess. Well that didn’t happen and it is not likely to happen at all this year in light of the new political realities.

    So while the corporate stooges where wasting their energy here some of us were very busy killing their attempt to legalize theft of inventor’s property.

    Here is a tip for all the corporate stooges, patent reform is dead this year. Next year is an election year and patent reform is dead for 2008.

    And when all of you understand the new realities you will discover that members of the Coalition for Patent fairness & PIRACY are cooperating to build a new factory in China to produce personal lube to help them cope with the huge liabilities they have incurred with their massive grand larceny of real inventors property.

    Come 2009 we will be ready to kick the tar out of both the Piracy Coalition and the HARMonization Coalition. It will be painful but they will learn a little respect. I would have thought they would remember what we did to them in the nineteen-nineties, but they are apparently slow learners.

    And one more thing, just wait until you see our legislative agenda. Transnational corporate thieves are going to have very serious heartburn:)

    Ronald J. Riley,
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

  4. Derrick and the Dominoes, you rock! You are the only one here who has the courage to speak the truth about the impact of the *reforms* on IP strategies, and historically what has made US the magnet for innovation and entrepreneurship.

    My team just had a discussion about the proposed legislation – couldn’t have said anything better. Hats off to you.

  5. Lionel wrote, “The one off-hand solution to the malpractice problem I see is modification of the retention letter to include some wording that as long as the firm files an non-provisional application within 1, 2, 3, etc. months or an otherwise agreed upon time period with the firm will be held to have performed satisfactorily regardless of whether another application covering part or all of the invention were filed in the interim period.”

    In writing, you could also (1) explain the typical time required to efficiently and effectively prepare a patent application in your ordinary course of business, (2) explain the risk that someone else would file first given this typical time period, (3) explain that you offer expedited handling at a for an additional fee (for example, $1,500 to $3,000), which is justifiable given that expedited handling generally reduces efficiency, (4) explain the still existing risk of others filing first with expedited handling, and (5) offer the expedited handling. This would allow the client to weight the costs and benefits of expedited handling and then assume the risk of not opting for expedited handling.

  6. the CEO would have to carefully plan out the IP to be protected.

    You mean instead of claiming everything in the freaking world the CEO and his lawyer would actually have to consider what was really invented? That is indeed a horrifying reality to ponder.

  7. Hey Lionel:
    An unforseen problem with provisionals concerns foreign filing licenses. Too often the client waits until the last minute and wants to file in Taiwan at the same time the regular patent application is filed only to realize that the regular patent application has claims very different from the provisional such that it calls into question whether the foreign filing license in the provisional may be used to support the regular filing.

  8. In Instant Publication moves foward along with the proposed continuation practice, what CEO in their right mind would file patents. Firstly, the CEO would have to carefully plan out the IP to be protected. This would require an analysis of the market and the resources of the company to determine the patent strategy. Once the CEO filed, all the inforamtion concerning the patent strategy will be public, whereby a competitor could work backwards and determine the other relvant knowledge requried by generate the patent strategy. As a result, I would have to counsel a client to seek Trade Secret Protection whereever possible and use patents only as a second alternative to IP that can easily be reversed engineered. Hey it has been a realy good ride the last 16 years. All good things must come to an end. I wonder if it is difficult to buy one of the Battery Franchises :)

  9. me wrote “The whole invention vs. disclosure is only valid if you accept the identical invention premise. Are you sure your inventor didn’t derive it at the last scientific meeting he didn’t tell you he went to?”

    Well both 101 and 102 already address the issue of derivation. If you can establish that someone did not invent their claimed invention or invented it based upon your novel work (making you a co-inventor) then you still end up in the same place.

    And yes, I believe that independent invention the case in almost every interference. Often, you have multiple entities competing technologically in the same areas. It is likely that they will come up with the same or similar incremental improvements to the technology. Even in the case of broader concept “pioneer” inventions, there are many times where people are racing to create something theorized, but previously technologically unknown ideas. For example, I assume there were competitors to create the first color LED or LCD display. Many times the concept exists well before the reduction to practice.

  10. The whole invention vs. disclosure is only valid if you accept the identical invention premise. Are you sure your inventor didn’t derive it at the last scientific meeting he didn’t tell you he went to?

  11. You folks seem to posit that “independent invention” of the identical invention is a regular thing, my experience leads me to disagree. If I take that supposition to be true, I end at the same place you do.

    As for interference practice, there is a section in the law that might eventually replace it dealing with derivation.

  12. Gideon

    “By the way – having done interferences, I can say that it is a miserable thing. The rules are poorly written and unclear, and the whole “count” versus “claim” legal fiction is joke.”

    I haven’t done any but I know a few folks who have done some, and at least one who has done a lot.

    Does the idea of having spent time learning the ins and outs of interference practice only to see it fall by the wayside bother you in any way? I can see how it might, and I can see how it might not.

    Just curious. I think there may be some attorneys out there for whom patent interferences are their bread and butter.

  13. anonymousAgent wrote “I’ll tell you what first to file will do:
    As a patent agent who does not want to get sued for ‘missing a filing date’, I will get a disclosure which I will IMMEDIATELY file as-is a provisional (after spending 1-2 hours removing damaging statements and slapping on an omnbius claim) in order not to be open for malpractice for not filing immediately. Of course, this disclosure document could be written like CRAP but I need the filing date.
    Then every time I improve the document, I will file another provisional with the ‘improved draft’ to make sure that I get the filing date for that material.”

    Actually, I and my colleagues in-house had a discussion about first-to-file and the one primary negative consequence we arrived at was the probable increase in provisional filings and MALPRACTICE suits. But remember with provisionals you cannot just slap a cover letter on, you better at least draft some claims along with a broad summary of what the intended invention is otherwise the provisional will not meet 112 standards.

    The one off-hand solution to the malpractice problem I see is modification of the retention letter to include some wording that as long as the firm files an non-provisional application within 1, 2, 3, etc. months or an otherwise agreed upon time period with the firm will be held to have performed satisfactorily regardless of whether another application covering part or all of the invention were filed in the interim period.

    Any other suggestions from OC?

  14. Tim Jackson wrote “The reform is not suggesting that the patent should go to just anybody who files first. Stealing someone else’s invention will still be prohibited, in exactly the same way as it always has been. (35 USC 101: patents may only be obtained by someone who invents or discovers something.)”

    And might I add 102(f)

  15. Me wrote “Sorry, I guess we I thought we all new Article I Section 8 of the Constituion that creates our jobs:

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”

    The right is granted to the “inventor” not the first person to file.”

    Yes, please note it does not say “to the inventor WHO WAS FIRST chronologically”

    The clause protects inventors. If you invent something today and I invent the same or substantially the same thing next week, I am an inventor just as much as you are. Therefore, the question not answered by the clause is which of us should be protected. This leads to the debate which is the subject of a more recent thread on here of which is more important – the invention date or the disclosure date.

    Congress has the Constitutional authority to address this issue. I personally believe a first-to-file system benefits everybody over the current system.

  16. Gideon wrote “Restricting Continuation practice? Big deal – big bucks can file many claims at the git go, wait for the restriction, then file divs. Small guy? Who can afford to file 5 claim sets with 10 claims each? Not too many.”

    This reform and the one limiting claims I think are ridiculous. The USPTO has yet to put forth any credible argument that reducing continuation practice will in any way help its backlog. And if I pay for more claims, I should get more claims and the amount of time an Examiner gets to review an application should be proportional to the amount I pay.

  17. me wrote “I think it very useful for folks to post why they think this is bad for the small guy, and to refute that you need to do more than make fun of them.”

    Well, the thing is, people HAVE NOT posted why this is bad for the little guy (for the most part). Most of the original posts were chicken little proclamations with no argument pr reasons presented.

    As much as I disagreed with Malcolm on one or two other threads (and I still think he’s crazy on that issue), he’s mostly right here.

    I personally am a registered Green as I oppose the hegemony of large fictitious corporate persons over government policy and think it makes a joke of our so-called demcratic republic. However, I do not see these reforms as hurting the little guy.

    I will tell you that the rather large and well-known company I work for has in the not too distant past had average filing times of well over a year for invention proposals, including the time between when the researcher made the invention and actually filed a disclosure of that invention and the internal technical review process and then assigning it to somebody, and then the attorney’s own personal priority system, etc.

  18. 2 comments

    First, to the guy who wrote this:

    “Where in the Constitution does it say anything other than you have to invent?”

    I don’t want to get into a big discussion on Con Law. The bottom line is, the SC “interprets” any way it wants.

    But with regard to your question, your analysis is backwards.

    If the Constitution says that patent laws will be enacted to give a period of exclusivity for inventing something, then it is, obviously, silent on independent invention of the same invention.

    Your position appears to be, “it’s not constitutional to have a 1st to file system because the Con doesn’t mention first to file – only “to invent”.”

    This is bass ackwards. Silence on a matter in the Constitution doesn’t make it unconstitutional. The constitution also doesn’t mention interferences. So? Are they unconstitutional?

    The better question is – “does the Constitution speak either way on first to file?”

    The answer is clearly a resounding NO.

    So it certainly cannot be said that the Constitution prohibits a first to file system directly, as it does the use of citizens homes to house soldiers.

    The next question is, would a first to file be in contradiction to any right gaurenteed by the Con?

    The answer, again, is resounding “no”.

    The second, independent inventor is, there is no doubt, an “inventor”.

    The Con gives patent rights to “inventors”.

    The obvious analysis is that there is no Constitutional issue at all.

    So I really don’t get your point. You seem to rely solely on the word “inventor” as the basis for excluding a 1st to file, 2nd inventor, but you have not reasoned why that 2nd inventor is not an inventor.

    As to the guy whose new strategy will be to file a provisional 10 minutes after he gets the app, followed by one new app every few days and after each new draft . . .

    Sir or maam – get ahold of yourself. Seriously.

    As a first matter, the measure of malpractice is not “everything humanly possible and then some.” If you competently prepare an application in accordance with standard practice, what is your worry.

    Second, and more importantly, what the heck are you doing now? Do you get an application and treat it with no urgency?

    Why would you do that?

    The way I look at it is very simple – there is a moving window of art behind you at any moment that you have an app waiting to be filed. Every day that goes by is one more day of 102b art that you let accrue on the record, one more day that 102a’s and 102e’s become 102b’s. One more day that it becomes more difficult to show a diligent constructive reduction to practice.

    I see no substantial difference in the above art and what would now be killer 102g art.

    You, apparantly, see a difference.

    Perhaps it’s the absoluteness of it. Rarely will 102b art be so dead on that there is nothing left to pursue. You argue around the art, you narrow the claims, and the malpractice is overlooked because nobody is thinking one year later that Joe Attorney sat on the app for 4 months, thereby making formerly innocuous 102a art into insurmountable 102b art.

    But with 102g, it feels different. They got the claim – we didn’t.

    Maybe it’s the sting of having competitor get it.

    In the end, however, it’s the same result for the client, whether it’s 102b or 102g – no claims allowed.

    It also depends on your art.

    If you’re in biotech doing gene patents, then a 1st to file system certainly puts more pressure to get the sequence on file – there might be 10 groups all researching the same mechanism.

    If you’re in a mechanical field, it’s a lot less likely that the art will be that cutting edge. Here you go, new spring thing on the weed wacker shaft – much less likely that the competitors are doing the same thing as it is that mega biocorp A and megabiocorp B are both working on a newly discovered protein that affects plaque formation in arteries.

    So, I recommend strongly that you calm down and reconsider your current methodology. You’re either not doing enough now or you don’t recognize that 102g art is just another form of art that accumulates in the moving window that closes on your filing date.

    By the way – having done interferences, I can say that it is a miserable thing. The rules are poorly written and unclear, and the whole “count” versus “claim” legal fiction is joke. I don’t see any harm in 1st to file, and I see a lot to gain by killing and burying the awful process known as the Interference.

  19. Instant publication is one of the big deals with the reform leg. which can potentially hurt the small guy inventor. Its this easy- big company sees it by the company patent issue watcher( there really is people with that job)- likes it- nice job,inventor-thank you-goes into immediate manufacturing mode-introduces into the market, sells millions, thanks again,inventor- inventor holding his ass in patent pending mode- finally gets his patent- takes big bucks to sue a big company, but he has big balls ,so he does-can’t prove to court how much he has lost to infringer because he hasn’t had the time or money to get it there- all his money is in the infringement action- court will likely gavel down in his favor but because he couldn’t show the court his true loss figure the damn thing becomes a wash- inventor moves to a sewer pipe and infringer continues to sell and guffaws all the way to the bank. I’m not bloviating-this happened to a tool inventor in the 90’s- screw that scenario- I’ll be damned if that happens to me ( Note- inventor disclosed to company under a NDA- company said it would never fly- built their own version-rest is history.Final note-NDA is to one company- what about the whole world knowing instantly- the whole notion is just stupid- One final final note-hell, all the company has to tell the judge is ” We come up with things like this all the time- we’re in the business. This will happen( if the invention is good).

  20. I’ll tell you what first to file will do:
    As a patent agent who does not want to get sued for ‘missing a filing date’, I will get a disclosure which I will IMMEDIATELY file as-is a provisional (after spending 1-2 hours removing damaging statements and slapping on an omnbius claim) in order not to be open for malpractice for not filing immediately. Of course, this disclosure document could be written like CRAP but I need the filing date.
    Then every time I improve the document, I will file another provisional with the ‘improved draft’ to make sure that I get the filing date for that material.
    So if it takes me 4-8 weeks to draft the application, there could be, say, 1-3 provisionals (or more).
    Now let’s say during that time period someone else is filing.
    This could be a M-E-S-S !! how do you know WHICH application is enabling for the invention and wins the ‘first-to-file’ race.
    How would this be determined in court ??? In the USPTO by overworked Examiners ???
    Also, this will, in general, make patent litigation more complicated, as the file wrapper could be thicker too.
    Law of unintended consequences !!!

  21. “Public Use and On Sale Activity outside of the US would now be considered prior art. This is probably justified by recently expanded extraterritorial effect of patent enforcement.”

    Yes, I noticed this in my reading of the House bill. Ever consider the proof problems with an on sale bar that applies to sales throughout the world? Incredible. I would be opposed to this just on these grounds alone. It is one thing to obtain documentary evidence from another country. It is quite another to obtain proof a sale in another country. This is not an issue I would cave in on so easily.

  22. There is precedent for the first to file system back during the 1836 and earlier patent acts. Under the earlier acts the inventor could be the first person to bring to this country technology invented by another in another country. In other words you did not even need to invent the technology . . . you merely had to be the first person to bring the technology to this country. In other words the first person to disclose could be considered an inventor. I believe, therefore, that the first to file system is an academic argument. There is nothing wrong with it.
    The problem I have is the instant publication of newly filed applications. I do not like that one bit. A person ought to be able to keep their invention secret until it is patented.

  23. Rhetorically, where in the Constitution does it say that an inventor has to be the first to disclose?

    It speaks, no more and no less, to the power of Congress, if it choses to do so, of “promoting progess” by providing an “inventor” with a time-limited, exclusive right.

    Personally, I enjoy taking legal priciples and placing them under “stress”. Posit the scenario where Congress says “Screw it…no patent or copyright laws will be enacted by us!” Now what happens? Can states step in? Can Congress try and rely on its Commerce Clause powers? What about “necessary and proper”?

    Posit a scenario where Congress chooses to enact a copyright law, and then in the law gives itself the right to grant copyrights independent of the Executive Branch. Problem with “separation of powers”?

    The possible outcomes are endless, which is what makes “stressing” such fun, especially when in briefs and arguments before a court.

  24. “Where in the Constitution does it say anything other than you have to invent?”

    Similarly, where in the proposed new law does it say anything other than you have to invent?

  25. “If you invent it and file first, it’s yours.”

    Where in the Constitution does it say anything other than you have to invent? Yes, disclosure is the public policy behind the grant of exclusivity and thus you cannot abandon, conceal, etc., but first to file is unconstitutional. I can’t wait for Scalia and Thomas to see this one – where strict construction takes them away from the wants of their conservative friends.

  26. “The right is granted to the “inventor” not the first person to file.”

    Silly? The above quoute is silly. If you invent it and file first, it’s yours. You are, under any reasonable interpretation, the inventor. Just because the other inventor got there later does not mean that you didn’t invent.

    I’d say that a 1st to file system is more consonant with the Constitution than what we have now, because the 1st to file system accomplishes two goals at once – it rewards the inventor and it encourages disclosure at the earliest possbile time, which is better for advancing the arts.

    Yada yada.

    I’m all for the little guy – I just don’t see 1st to file as a big deal.

    In terms of big corp? My experience has been that getting an app filed is slow and laborious. It seems to me that a well-motivated start up or solo inventor would have a huge advantage in getting an app on file – no authorization, no review, no discussions with management.

    In terms of cost, I don’t like the reduced small entity fees. I think that fee diversion should stop, and all fees should be the same for all applicants. But if it was reformed like I’d like it to be reformed, the costs would all be cut in half anyway.

  27. So, “inventor”, as used by the founding fathers, is limited to “the first to invent”?

    What if the first to invent dies without disclosing? Or, if the first to invent only discloses under cover of NDAs? Is a patent granted to the second to invent “unconstitutional” in these situations? Let’s be clear, these “second to invent” patents are completely permissable under our current system. If they are unconstitutional then that is a new litigation strategy that I may need to explore.

  28. “The right is granted to the ‘inventor’ not the first person to file.”

    The reform is not suggesting that the patent should go to just anybody who files first. Stealing someone else’s invention will still be prohibited, in exactly the same way as it always has been. (35 USC 101: patents may only be obtained by someone who invents or discovers something.)

    Rather, when two people invent the same thing, under the new law the patent will go to the first of those inventors to file. Whereas at present it goes to the first inventor to invent.

    So either way, it goes to the first inventor. We’re just arguing about how you determine who was the first inventor.

    In any such contest, there will always be one inventor who wins and another inventor who loses. And it’s as likely to be the nimble small guy as the lumbering big guy.

    The question is, should you determine the answer the easy, cheap way that gives a certain answer up front, just by comparing the dates of two patent applications? The way that the small guy can easily afford?

    Or should you do it the difficult, expensive way, that demands the inventor produce evidence of how he made the invention, to strict and onerous standards? Bearing in mind that few inventors, big or small, can meet those standards? So that after they’ve spent all their money on trying, it’ll still probably come down to whether they were the first to file?

  29. Sorry, I guess we I thought we all new Article I Section 8 of the Constituion that creates our jobs:

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”

    The right is granted to the “inventor” not the first person to file.

    This is also why the whole argument that “most interference go to the first to file anyway, so…” is just silly. Read the law – just because most fail does not mean they are not required.

  30. In a prior comment I noted that the patent system is about invention AND disclosure. Not just invention. Sorry for the misunderstanding on that point.

    I understand the point about self-revealing items such as a hand tool. I don’t understand how the reforms hurt that inventor as long as he is first to file within one year of his first sale. The on-sale grace period is still around, and even if there is a copier, that copy does not count as prior art under a special 102(b)(2) exception as “subject matter derived from the inventor.” If I sell a self-revealing invention without a patent application in the works and I run the risk of being copied and having the copier kill novelty. Heck, the statute still gives me a year to file. If someone beats me to the patent office before I commercialize, then the fact that my invention was self-revealing is meaningless. Society received the invention and awarded the first discloser.

  31. “The point is, some of these proposals increase the advantage.”

    The monetary advantage of big corp over small guy is so enormous already that the “extra bites” you refer to barely register as “increases.”

    They do seem to give the struggling medium size guy a fighting chance over the small guy abusing the crap patent, though.

    So how much welfare for the small guy would satisfy you? First 50 claims for free if your taxable income is less than $40,000/annualy?

    Seriously. I mean, if filing 5 claim sets with 10 claims each is a backbreaker for the nation’s geniuses, then the fees should be adjusted in a more progressive manner. What’s fair?

  32. Man, this thread is all over the place.

    First to file? No big deal. As one poster said – we practically have that now. What % of interferences resolve in favor of the senior party? All of the ones in which I have been involved.

    Extra bites at the apple with oppositions, reexams, litigations? Big deal.

    The more attacks you allow, the more you tilt the playing field in favor of big corp. Particularly when it comes to defending a patent – on offense, the small guy can get a firm to take a very good case on a contingency. On D? You either have the cash or you’re done. Not many investors are going to fund a defensive litigation for very long.

    Restricting Continuation practice? Big deal – big bucks can file many claims at the git go, wait for the restriction, then file divs. Small guy? Who can afford to file 5 claim sets with 10 claims each? Not too many.

    Lowering damages? Helps big guys. With risk down, they can infringe with comfort. Small guys? They usually stop when they get the nasty letter.

    To the argument that “big corp always has an advantage”, I say, “so?”

    We all understand that more $ means advantage with patents. The point is, some of these proposals increase the advantage.

    And people, don’t feed trolls and they make less noise. It’s the weirdest contradiction.

  33. How is that an answer to 3L, small guy? The patent system does offer incentive (the limited term monopoly) in return for up front disclosure to the public. The self-revealer doesn’t even have to think about whether to file. If he doesn’t he’s got nothing but, if he does whack in a quick cheap pat appln, he’s got 20 years. It’s tougher for the non-self revealer. Should he or shouldn’t he file? His pat appln will likely cost quite a lot more to craft. So, we have to give a big enough incentive, to tempt him into filing, for the public good. The incentive should be proportionate to the value of the disclosure to society. For me that means quick cheap effective ways to stop infringement, with recovery of legal costs, and damages proportionate to the financial damage suffered. BTW nice post Tim Jackson. When Congress wrote First to Invent, it really made a difference to the filing date at the USPTO, whether the hand tool inventor was living in DC or somewhere out West. First to Invent gave the out west guy a chance. Fair enough, I say. But today, are Californians still disadvantaged in this way, by First to File? I think not.

  34. Hey, 3L,

    I don’t know what they teach you in school, but you just don’t understand this whole invention thing.

    There are 2 kinds of inventions: self-revealing and not self-revealing

    Suppose you invent a simple hand tool. How the hell a trade secret can possibly protect it if the moment anybody sees it he can make the same.
    On the other hand, some software algorithm, like Google search engine, if it’s run on a server side, is absolutely protected -there is no freaking way to reverse engineer it.
    Patents are not just about disclosure, they are about incentive too,
    No incentive = no new hand tools invented by small guys without resources to set up a large manufactoring facility.

  35. In addition, why should the second inventor be “a dollar short” if he is first-to-file? Indeed, the second inventor/first filer is more valuable from a societal perspective than the first inventor/second filer because society gleans value from the disclosure of the invention than in the creation of the invention.

    We don’t need patent law to give an incentive to invent. You could invent and sell your product under trade secrecy. We need patent law to get you to disclose your invention to the rest of the world. Once you realize that patent law is all about disclosure rather than incentives to invention, it becomes clearer that first-to-file is closer to the purposes of patent law than first-to-invent.

    From a societal perspective, he gave me what I wanted first — he disclosed his invention before the schmuck who sat on his rights and filed second. What matters from a “progress of arts and sciences” perspective is who DISCLOSES first.

  36. Tom, my point is that there is no constitutional requirement for first-to-invent. Whether something is better or not as a policy matter is a different story.

    Please explain to me, since you’re out in the real world and all and I’m just a student, how a published provisional application will keep the first inventor (and first filer, by the way) from making a viability perspective study.

    Finally, you started your post by saying that the second inventor is a day late and a dollar short, but you’re just arguing against first-to-file by saying that we have a first-to-invent system. The whole point of the reform is to go to first-to-file. Maybe I missed something from your post though.

  37. As 3L implies, the US Constitution merely empowers Congress to provide patent protection for inventors. It doesn’t say whether the patent should go to the first to invent or the first to file.

    The historical origins of this constitutional provision came from 17th and 18th century English patent law. That too said that patents could be granted to inventors, without specifying whether it should be the first to invent or the first to file.

    In fact, neither the English nor the US even considered the issue at that time. The situation of having two rival inventors claiming the same invention simply didn’t arise in either country until later on.

    When the problem did arise, the US Congress resolved it by amending US law to grant the patent to the first to invent. England jumped in the opposite direction. Either way was compatible.

    Since it was Congress who made the original decision on first to invent, not the Constitution, it surely follows that Congress has the power now to change it.

  38. Bull 3L,
    You are not in the real world when it comes to inventing. The second inventor is a day late and the proverbial dollar short. And the fact that a provisional is unpublished is also very important- gives that person the needed time to make a viability perspective study- cost and marketing- and they still have their earliest filing date- which holds up in court. Your point is absurd.

  39. me,

    remind me where in the constitution that it requires us to have a first-to-invent system?

    I love how people throw around constitutional arguments without citing to the provision in the Constitution where their argument is grounded.

    I can guarantee your not looking at Art. I, Sec. 8, Cl. 8. If anything, promoting arts and sciences is better served by a first-to-file system where the invention is immediately published.

    Also, a hypothetical second inventor is no less an inventor than the first inventor if the first inventor has concealed. You admit that in your post. If a first inventor does not immediately file or disclose, then he conceals in the technical (non-legal) sense.

  40. I think first to file gives an advantage to big guys, but that is really irrelevant to the point that the INVENTOR gets the right under the Constitution.

    According to this logic, the 2nd amendment demands that we provide everyone with a gun immediately after birth.

    “To argue that somehow letting IBM or Microsoft have three of four cracks in order to sue”

    I think under the reforms EVERYBODY gets the same number of cracks.

    If the issue is that the “problem” being addressed by the reform isn’t really a problem but is just some mega-corporation seeking charity, then the reform is bogus. I agree with that. That’s what we saw with the copyright extension act, no doubt. Lobbying by big business to achieve self-serving laws at the public’s expense is a serious problem in the United States.

    But does the spirit of these proposed reforms really reek so terribly? Does it smell worse than the crap patents that were issued (and are still being issued) to “small inventors” and megacorps alike?

    I don’t think so.

  41. Malcolm-

    Cool of a bit and read the posts. The little guy is not asking for special treatment, simply the exact treatment required by the Constitution and the fair shake we are supposed to allow in American courts. Where you get this special translation cost stuff I just don’t know, or see, in the above posts.

    The first person to invent is constitutionally supposed to get the right of exclusivity (if they don’t conceal, etc.) no matter who files first. I think first to file gives an advantage to big guys, but that is really irrelevant to the point that the INVENTOR gets the right under the Constitution.

    To argue that somehow letting IBM or Microsoft have three of four cracks in order to sue, instead of one (or two if there is an interference/invention issue) is just laughable. We do not want courts to become a place where a large corporation does a calculation and decides it is cheaper to sue (over and over again) instead of stopping the infringment or licensing the technology.

    My solution – do away with State Street Bank (i.e. no biz method patents) and software patents (make them go the copyright route) and leave the patent laws alone!!!!!!!

  42. “Unanimity might mean that most people”

    That’s news to me.

    “I think it very useful for folks to post why they think this is bad for the small guy, and to refute that you need to do more than make fun of them.”

    Actually, this is where you are wrong. I don’t need to do anything more than toss some snark to refute the assertion that the proposed reforms are going to cause the extinction of small inventors because ZERO evidence has been presented to support the assertion.

    The “argument” boils down to “small inventors are small and therefore need lots of special love and attention which isn’t in these reforms.”

    Okay. Let’s get swept up in that emotion. So why aren’t the small inventors demanding that the PTO provide free Chinese translation services? I mean, think of all the Chinese people in America who have non-obvious ideas but who can’t file a patent because they can’t afford a translator! How is the lack of free Chinese translators serving the public’s interest in getting these ideas disseminated? Blah, blah, blah. You get the idea.

    There are a lot of interesting aspects and potentinal consequences of these reforms but other than “allowable claims on demand” and “absolute waiver of fees”, what would possibly satisfy the chicken littles here who flip out because they believe that every other rule change or CAFC decision is an additional nail in the small inventor’s crucifix? Seriously.

  43. Wow, judgmental aren’t we?

    Why don’t we attmept to post valuable insight and not just spittle and rage? Unanimity might mean that most people have an opinion about your personality and/or the quality of post (or at least how it comes across, which might not be the real you), and it might make some humans (non-litigators only) rethink how they are coming across.

    I think it very useful for folks to post why they think this is bad for the small guy, and to refute that you need to do more than make fun of them.

  44. Define “unanimity.”

    It means he speaks for everyone and that’s supposed to carry weight because large groups of people are never wrong or deluded or have mob mentality.

  45. “we do seem to have a particular unanimity of opinion when it comes to your posts.”

    Define “unanimity.”

  46. “I would be interested in your arguments if you can provide a basis in fact or law – spittle and hate might sway the masses but facts and law work better with attorneys.”

    LOL. Tell it to the whiners who preach to us about the “death of small inventors” ad nauseum with precisely ZERO data to support their bizarre apocalyptic claims.

    Someone else wrote:

    “sometimes the small guy can come up with a good idea that isn’t obvious and needs this huge bureaucracy called the USPTO so as to hold on to their ass and their invention ”

    That’s nice. Nothing in these reforms prevents a small person from filing an application and protecting their invention. Did you have a point?

  47. Has anyone seen the patent lawsuit filed by Robert Tendler of Tendler Cellular against OnStar involving patent # 7,050,818?

  48. Malcolm, it must be a slow day in the endless grind of prosecuting obvious patent applications for your unsuspecting small inventor clients( they can’t see you snicker as you write their claims around someone else’s patent)for you to bloviate with such extravagance- you actually can give insightfull thoughts and facts if you can keep to the facts and leave your personal thoughts about the small guy inventor to the rear- sometimes the small guy can come up with a good idea that isn’t obvious and needs this huge bureaucracy called the USPTO so as to hold on to their ass and their invention – or else we might as well just call the 800 number of all the companies in the related product art and give them the idea over the phone to their new product or law department- “Hey, you don’t owe me a dime- I just want the satisfaction of seeing my invention in the market-it will give me a warm feeling inside”. Yeah, maybe we should just do that.

  49. I am back. I believe that we must examine this from the view point of multinational versus non-multinational organizations. One of the major problems I have with early publication is how it undermines a major advantage of the United States. There are volumes written about the resulting cultural filter that occurred in North America during the first 500 years of exploration and development here. Apparently the mindset of individuals who would trek so far from civilization and succeed in surviving in this land were those of discipline and creativity.
    Early publication of inventions filed by U.S. citizens undermines that advantage. You see if everything filed is instantly published this inures to the benefit of multinational corporations, because volumes can be divined by looking at published patent applications. In fact there corporations can commence development of a market based upon early published technology before the individual or medium-sized non-multinational corporation can garner its patent rights. I would go so far as to state that the Congressmen and Corporations who back this legislation are either anti-american or too ignorant to understand the serious damage this will wrought upon the United States. And for you non-Americans out there, yes, we have the advantage of generatiosn who said to the old country F-off I don’t like your caste system. It’s just too bad that we keep getting drawn into your wars. In short, the United States has always fluorished in isolation and is constantly distracted when interacting with the world. Imagine how much furthe the U.S. would be if we could destroy the carbon-based power structure in Huston, Texas and let our Yankee know-how develop well known and capable alternative energy sources.

  50. Me spent four years in house at a Fortune 500. We may have been more nimble than many law departments, but we could file on a dime…and we did.

  51. me wrote “First to file is terrible as any big company with a law department can file more often and more quickly than any small guy.”

    Hmmm, I wonder whether me has actually worked in a big company before? I have and do, very very large ones, and if you think that things move quicker in these sorts of companies because they have more resource available then you my friend are deluded.

  52. “There isn’t much need for mediocre patent attorneys now, small guy, and there never was.”

    I read a glossy report once that claimed that 50% of patent attorneys were of below average skill. I was shocked and awed.

    Also, aren’t small entity fees a form of welfare?

    If we really want to make it easier for the little guys, why not have further reduced fees for tiny entities, or micro-entities, or what have you. That way Malcolm could afford to file for his flubber invention (sorry, spilled the beans).

  53. Malcolm-

    I would be interested in your arguments if you can provide a basis in fact or law – spittle and hate might sway the masses but facts and law work better with attorneys.

  54. Welfare for the small inventor? Huh? Ever heard of the constitution?

    As to holding up the small guy in litigation so he runs out of money – that is a different argument, if the small guy can’t get the invention to begin with the whole system fails both constitutionally and in practice. First to file, and ease of suit should change. I am for a cheaper forum, which is good for the small guy.

    Most innovation occurs from the small guy, we need them, and we need to protect them.

  55. Re-exam was initially hailed as a viable means to get rid of “bad” patents that should not have issued. I learned quickly (filing Re-exam as a third party requestor – I think mine was about #10) that it was anything but that.

    Increased fees and maintenance fees were likewise hailed as a way to make the PTO self-sufficient and to clear the decks of meaningless patents. Re the former, fee diversion quickly followed. Re the latter, it priced patents out of the reach of certain inventors (whether this was good or not is, of course, a matter of debate).

    One thing I have learned over many years of practice is that “reforms” usually are not…

  56. SF, I was wondering that too. Maybe Mr Riley’s members are too. Any longer, and some of his members might even be starting to wonder whether paying next year’s membership fee really is such a good idea. If Mr Riley writes, maybe he can address the cases of some of the very many UK independent inventor little guys who have done well out of First to File. I cite Dyson (vacuum cleaners) Hickman (WORKMATE) and celebrity inventor Mandy Haberman. In each case the invention was financed on a shoestring, but founded a successful company. That’s hard evidence of a patent system doing what it is supposed to do. To repeat: 1) there is in the real world no evidence that First to File is bad for the little guy, and 2) the present US system hurts little guy every step of the way, until a jury decides he should get treble mega damages. Should the US Congress perpetuate a system that gives owners of invalid claims an incentive to subject makers and sellers to a river of threats of treble mega damages? Is a hostile environment for innovative companies a good thing for the US economy?

  57. “when small independent inventors are exterminated, followed by high-tech startups (alas, no patent protection = no VC funding) you might find yourself out of work and in the street, cause there won’t be much need for mediocre patent attorneys”

    There isn’t much need for mediocre patent attorneys now, small guy, and there never was.

    Attorneys are expensive. If you don’t have an extremely important reason to hire a good one, then why would you bother talking to one at all?

    That’s my approach. Speaking as an attorney, I hope I never need to personally hire one, just like I hope I never need to hire a brain surgeon (much less a mediocre brain surgeon).

  58. Another point:

    I see comments about corporate espionage. There is something called trade secret misappropriation laws that would seem to cover that type of behavior with legal and equitable remedies that could flow as a result. As with all legal regimes, things get complicated when actors do not act in altruistic ways. It is probably better to have tort/contract law attack the actual act rather than have a bad property rights regime in the fear that people might not act honestly.

  59. me wrote “First to file is terrible as any big company with a law department can file more often and more quickly than any small guy.”

    First, I disagree with this premise generally, but even if true I note that in a different argument, you mention the ability of the big guy to tie the little guy up in litigation. Isn’t first to invent just one more way that a big guy can tie a little guy up in litigation?

    Also, if the goal of patent law is to increase the dissemination of information, shouldn’t the party who files first get the reward? It’s not like ideas are being stolen. There is always 102(f) to deal with that.

  60. Random responses to all:

    I don’t understand the intrinsic value of being first if you were second in telling people about your invention.
    From a policy perspective, first to file is more in line with our notions of the patent bargain. The incentive is to INVENT AND DISCLOSE not to simply invent. I can invent anything right now and keep it as a trade secret. The patent right gives me the incentive to tell the world about my invention. If the world already knows about my invention because I sat on it for too long, then they don’t need me to get the invention because they already have it.

    Also, has everyone forgotten about provisional applications? This is how the little guy places his foot in the door. Any small guy who makes any presentation now without having filed a provisional application is bonkers and I have no sympathy there.

    Finally, what about the empirical evidence which shows that we are — effectively — a first-to-file country in that a good majority of interferences collapse to who filed first? The sky is not falling because first-to-file is essentially the world we live in.

    With respect to the cancellation proceedings, how is that any different from declaratory judgment from the POV of the small inventor? Little guy still has to shell out money for the defense. There is always a “little guy” in all of these stories. There are always well-monied litigants against less-monied litigants. Our entire legal system has this systematic inequality. Why should the patent system be any different with respect to its little guys than the tort system or the contract system?

  61. inventor wrote “Try this on for size: An academic presents a demonstration of his new invention at a platform presentation at a scientific conference. One of the attendees sees that demonstration and decides to integrate the teachings of the invention, or even improve upon it, into a publication that he rushes to press. It publishes before the original inventor is able to get an application filed. The inventor is then screwed.”

    OK, I assume in your example, that the attendee publishes within a year of your talk. In this case, if the 102(b) one year bar is erased (and I have not read the changes to the law, so I am just going by the poster’s summary) then you are right, this is bad.

    But isn’t it equally bad for the big corporation?

  62. Malcolm,

    You haven’t contributed anything to any of the discussions here, just diverted attention with your idiotic remarks.
    It just doesn’t seem that you are capable of generating any patentable idea at all.
    Just keep in mind that when small independent inventors are exterminated, followed by high-tech startups (alas, no patent protection = no VC funding) you might find yourself out of work and in the street, cause there won’t be much need for mediocre patent attorneys – patent lawsuits will be rare.

  63. “First they will kill off the small, independent inventors and then the start ups. Next, the medium sized innovators will be exterminated. And when they finally come for you, who will be left to cry for your salvation?”

    Welcome to the Church of Welfare for Small Inventors! Whining begins at 10 am sharp, Monday through Friday. Nobody with money allowed through the doors (such people can afford to engage in espionage, you know).

  64. “1) First to file is terrible as any big company with a law department can file more often and more quickly than any small guy.”

    Translation: welfare for small inventors! it’s the only way to preserve competition!

    “2) The time from invention to filing (6-12 months you cite) is much less than many small inventors can get.”

    Translation: welfare for small inventors! it’s the only way to preserve competition!

    “3) Raising the bar for what is patentable is terrbile for the little guy as it allows the entrenched large interests to continue to force their monopoly”

    Translation: everybody should get broad claims so we can sue big companies because that is our right because I say so!

    “4) Allowing many bites at the apple for litigation and litigation-lite means the big guys can sue the little guys over and over until they run out of money.”

    Translation: welfare for small inventors! it’s the only way to preserve competition!

  65. “On the other hand, not everyone is honest, and the first to file provision is as big an invitation as one could imagine for unscrupulous players to use intelligence gathered via corporate espionage in order to game the timing opportunity in order to beat a real inventor to the PTO.”

    Are we back to these dead end arguments again?

    For the billionth time: bigger businesses with more resources always have a statistical advantage over smaller businesses.

    That’s life. Whether the system is “first to file” or “first to invent” doesn’t change anything.

    I have a million non-obvious inventions in my brain, at least as far as many of the commenters here are concerned. If I had the money and time to burn, I could file on them all. Does the fact that I don’t have the money and time to burn on filing all my patent applications mean that the system is is improperly biased to favor more wealthy people who do have the money and time to burn?

    Answer: no.

    Welcome to the United States. I would love to see more socialist policies enacted here but I’ll be damned if “small inventors” are on my short list of those entitled to governmental welfare. Give us all a break already.

  66. Given that First to File is everywhere except USA, and has been since the dawn of time, one might expect there to have been, over the years, at least one or two of these acts of theft that commentators above are so worried about, and which are asserted to be inevitable in a First to File landscape. Anybody got any experience of that happening? Does it happen often in Europe, does it happen ever in USA? If I recall it right, in interferences under current US law, first to file party (who under your scenario will be the big bad corporate thief) almost always wins. BTW, Derrick, also in Europe, only humans can invent. What provision of IP law in Europe are you thinking of, when you suggest that entities other than humans can invent (chimpanzees, or members of a lower caste, sitting at keyboards perhaps?). The short point is that a nimble David can always beat a lumbering Goliath to the doors of the USPTO, but will then still not beat Goliath when the disclosure, enablement, written description requirements are absurdly onerous. Why blame First to File when the disadvantage that little guy labours under is something completely different?

  67. >Doesn’t the language that any
    >art held against the patent
    >cannot be by the inventor, or
    >derived from the inventor get
    >around your scenario?

    Not at all. Especially not if all the preemptive publisher wants to do is prevent anyone from getting a patent that covers the relevant area. The likelihood that derivation could be detected afterward would be merely a factor of how good the dishonest party is at incorporating the functionality of the invention into his/her own paper, without copying verbatim what the original inventor presented.

  68. Even assuming that everyone’s honest, inventors rarely are able to do their development in complete secrecy. In fact, the smaller the inventor, the more exposed (s)he is during that process, since (s)he is typically faced with the need to find some sort of financial support in order to continue his/her work. The larger the corporation, however, the more likely that the invention research can be kept completely secret until a patent application can be filed.

    On the other hand, not everyone is honest, and the first to file provision is as big an invitation as one could imagine for unscrupulous players to use intelligence gathered via corporate espionage in order to game the timing opportunity in order to beat a real inventor to the PTO.

  69. Doesn’t the language that any art held against the patent cannot be by the inventor, or derived from the inventor get around your scenario? It is sometimes difficult to knwo that a disclosure was derived from someone else’s idea, but this is an attempt to protect against your scenario.

    I think it an attmept to codify the current law. Egnot v Looker 387 F.2d 680 (1967).

  70. >How do they hurt the
    >individual? Please recite a
    >scenario under the new rules
    >where the individual inventor
    >is worse off then they would be
    >under the current laws

    Try this on for size: An academic presents a demonstration of his new invention at a platform presentation at a scientific conference. One of the attendees sees that demonstration and decides to integrate the teachings of the invention, or even improve upon it, into a publication that he rushes to press. It publishes before the original inventor is able to get an application filed. The inventor is then screwed.

    Also, you can substitute any number of scenarios for the “academic at a conference” one, such as a presentation to VCs in an attempt to raise money for development. In that case, some portfolio company that the VC owns suddenly pops up a white paper on their web site, beating the real inventor to the punch. Again, the inventor is screwed.

  71. Someone asked for what is bad for the little guy:

    1) First to file is terrible as any big company with a law department can file more often and more quickly than any small guy.

    2) The time from invention to filing (6-12 months you cite) is much less than many small inventors can get. I have worked in-house in a Fortune 500 and out here with the small guy – this is bad for the small guy.

    3) Raising the bar for what is patentable is terrbile for the little guy as it allows the entrenched large interests to continue to force their monopoly (i.e. Microsoft) no matter how good someone elses idea is (ie. they can just steal it).

    4) Allowing many bites at the apple for litigation and litigation-lite means the big guys can sue the little guys over and over until they run out of money.

    What do you mean is this bad for the little guy? Microsoft seems to have written this to maintain their monopoly and allowing themselves to steal everyone’s elses ideas (Gates has done this for years).

  72. Big Guys 124, little guys, 0.

    This is nothing more than the continued march toward forced licensing of all inventions made by anybody outside of a fortune 2,000, or so, company.

    In other words, the way this is set up entirely favors big corp at the expense of everybody else.

    Don’t like that pesky patent? Challenge it 5 ways till Sunday and make the product anyway, because there won’t be treb dam and you’ll get an Ebay license on it.

    I really need to get out of this line of work.

  73. Derrick,

    America exports the corporate mentality. European governments tend to still have a little bit of power in their own jurisdictions.

    Again, some of the ideas are “pro corporate” but only in the sense that they positively affect corporations.

    How do they hurt the individual? Please recite a scenario under the new rules where the individual inventor is worse off then they would be under the current laws.

  74. Wow.

    I don’t understand the alarmism being expressed on this page. Can someone tell me which of the reforms above is unfair to small inventors?

    I especially like the willful infringement requirements. Way too many defendants have been found guilty of willful infringement without any evidence of bad faith.

    Also, first to file is good for the small inventor, not bad. First, independent inventors are at least as likely to get an idea patented before a corporation does than vice-versa. Having worked in the corporate world, the gap between invention and patent filing is typically 6 months to a year.

  75. Let’s talk about those well trodden paths Rodrigoe C. It was the United States under FDR that effetively ended European colonialism. Should we have jumped on the band wagon and continued with colonialism? Another significant departure from the patent law of other countries, in the U.S. only humans can invent. In other words, we are, albeit fleetingly, a country where the individual still counts. In Europe, with its caste system, the individual is nothing-but a resource to be used and consumed by the corporate form. Perhaps you should understand that the first multinational corporation, the Dutch East India Company, was the beginning of Democractic rule in North America. It inured to its benefit to war against the Indians that resulted in the deaths of the citizens of New Amersterdam, now New York. The citizens got fed up and revolted against the corporate governor, Peter Styuvesant.

    Even the American Revolution was not so much a war against England, but a war against English corporate interests. The colonists’ exercise of their rights hurt the profit of the English business interests so the King sent the Red Coats in to quell things.

    Be careful of these corporate forms. They are treated by the law as individuals; however, they don’t eat, they don’t sleep, they don’t love, or feel pain and they absolutely will not stop until they control all that is humanity. I borrowed a little of that last sentence from The Terminator.

  76. Dennis: “The proposal shifts all focus from an invention date to the ‘effective filing date’ and in-the-process eliminates the US one-year grace period. Notably, the grace period would still be intact for the inventor’s own disclosure.”

    Surely for an independent inventor, what he needs most from a grace period is to be able to develop and test his invention in the marketplace, so he knows he’s not wasting his money before he files? A priority battle against another inventor who made the same invention around the same time is very unusual. Needing to be careful about making his own work public is commonplace.

    In this respect, the reform proposal actually **increases** the current grace period. The inventor will always get a full 12 months grace in respect of his own earlier work.

    Under the current law, on the other hand, he only gets his date of invention or 12 months, **whichever is later**. His date of invention for the current invention is quite likely to be **after** the date he made earlier work public. Such earlier work can currently be used in an obviousness attack against him, even if it is within 12 months.

    Scenario: In January 2006, I conceive that a certain problem can be solved by a device comprising features A+B in combination.

    In March 2006, I hawk my invention around the industry, trying to get commercial interest. I do this in a public, non-confidential way.

    In June 2006, I try building the device A+B. It doesn’t work. However, it’s instantly obvious that the reason it doesn’t work is that I should have used an obvious alternative B’ instead of B. I try this and it works.

    In October 2006 I file a patent application for A+B’.

    Under the current law, my patent is invalid under section 102(a) in conjuction with section 103. It’s obvious from what was known in the art in March, even though they were my own disclosures. March is before my June date of invention. The 12 month grace period doesn’t save me.

    Under the new law, however, my patent will be valid. My March disclosures are within the 12 month grace period before the October filing date. My June date of invention is irrelevant.

    And there is no need for any evidence to prove my date of invention – a significant stumbling block for most independent inventors under the current law.

  77. Small guy-

    I agree, I still think we should just modify 101 and make business methods and software non-patentable subject matter and then the Microsoft’s of the world will go away and leave patent law to the scientists.

  78. While we are at it, can we lengthen the time during which we can file prior art through an IDS in someone else’s case (37 CFR 1.99).

  79. “Although I hate first to file and think it unconstitutional”

    My dear friend,

    Since when tweaking US patent law to benefit the largest multinational corporations has anything to do with US Constitution ?

    EBAY decision was downright unconstitutional, so what ? Who the hell cares ?

  80. Although I hate first to file and think it unconstitutional, I love the idea of making inter-partes re-exam a real forum. We need a less expensive forum with people who know patents – great idea.

  81. Question:
    Will the first to file rule result in the necessity of filing a provisional application for every invention? In other words, when a client comes into you office with some notes and sketches of his invention at 4:00p.m., are you going to be forced to slap a cover sheet on it and file it as a provisional application that same day in order to get the earliest possible filing date?

    Will this lead to multiple provisional and non provisional applications being filed as you begin to work on the invention and realize that there was a lot that should have been included in that original provisional application that wasn’t included?

  82. Stepback,

    A lot of these people have a slave mentality, and they expect others to think the same way.
    If they care so much about “harmonizing” US patent system with the rest of the world, they’d better think of some provisions in the law which would allow you e.g. to go and sue your former corporate employer for insufficient renumeration.
    Just like that famous inventor of the blue LED in Japan who successfully sued his former employer to get a large reward
    link to japansociety.org
    By the way, he publicly complained many times about Japan not rewarding scientists and engineers for their contributuons.
    And what about US ? In the US he would be laughed out of court…
    Harmonizing indeed…

  83. Step back, working in the European patent system with independent inventors and startups, I don’t really have a feeling of being marched into the slaughterhouse. So, excuse me if I don’t think that the sky is going to fall in the US if you follow the well-trodden paths everybody else took decades ago.

    Of course, I’m not familiar enough with the US legal system to fathom all the unintended (or intended, but not instantly obvious) consequences these reforms may have. That’s why I’m looking here. But hyperbolic alarmism and talk of “swastikas” and “slaughterhouses” aren’t really what I understand as insightful legal analysis.

    I can just say that in my experience, US litigation is a lot more terrifying to small companies and independent inventors than anything we have to offer on this side of the Atlantic.

  84. With regard to this comment:
    link to patentlyo.com

    I’m most “impressed” by people’s assention to herd coralling logic. You know. The kind that asks us to step “into line”, to stay the course and to “harmonize” ourselves with the rest of the sheep as they march blindly up the ramp toward the slaughterhouse.

    First they will kill off the small, independent inventors and then the start ups. Next, the medium sized innovators will be exterminated. And when they finally come for you, who will be left to cry for your salvation?

    No wonder the term sheeple is sometimes applied even to the most scientifically minded of people. Sheesh. Or should I say Bah Humbug? When will you pull yourself away from the flock and start thinking for yourself?

    All these new, new, “reform” laws are intended to do one thing: bleed to death the small and financially weak start ups no matter how “truly” innovative their contributions are.

    Think of these post grant oppositions like IRS audits. How many would you personally be able to weather if you can’t afford the most expensive of legal defense teams?

  85. And the Godwin award goes to Derrick and The Dominoes.
    Frankly, I’m less than impressed by all the outraged reactions to these reform proposals. They basically amount to bringing US patent law in line with what’s commonplace in the rest of the world, ant the ROW isn’t doing that bad. Not Invented Here syndrome, or selfish reaction of a profession that makes a lot of money out of interference proceedings and outsized damage awards?

  86. You know it seems to me that the real issue here is the cost of litigation. I have a solution. Let’s just toss the 7th Amendment. Hell who needs the courts anyway. All they are going to do is let those pesky little inventors enjoy their rights under the intellectual propery clause . . . God knows that has to be bad for business.

    Another cost savings idea is make it where anyone working for a company cannot assert any rights in the ideas that they have against the company for which they work and any company doing any type of business with the employee’s company.

    Another cost savings measure would be to do away with all sick time and vacation. For that matter, Congress may want to pass legislation condeming all land around any major corporation and granting the land to the corporation to rent back to the employees. In this manner, the company could establish a valuation of the real estate market commensurate with what it desires to pay the employees and still maintain a suitable standard of living. Along those lines it might be cost effective to require each employee to set up shop in their house, seeing how it will be company property anyway and situated proximate to the main campus of the company. Wow we could just keep going foward with respect to increasing profits, effeiciency and the like. Who knows perhaps we will all be living in dog kennels . . . that worked well from the Krupp family in 1930s and 1940s Germany. Even IBM worked to make things more efficient for German industry in the 1930s and 1940s. Man ya gotta love those efficiency arguments. At what point do we start talking about limiting the IP rights that companies can extract from their employees. This legislation is so one side I would not be surprised for it to be wrapped in a Swastika.

  87. As an in-house counsel who has to pay the bills, I think the interlocutory appeal is great. Why should the entire case be tried twice in the about 50% of times the CAFC reverses the trial court Markman ruling? I’ve heard trial judges state at AIPLA that they favored granting a summary judgment motion with the Markman ruling just to get the CAFC to give its Markman position before trial. This is a better alternative.

    Why face a $$$ judgment and a possible injunction before the claim terms are finalized?

    BTW, I also strongly favor no damages discovery or trial until infringement is found, again to keep costs down. Why spend hundreds of thousands of dollars on an issue that may not even matter?

    P.S. – Litigators hate me!

  88. Dennis:

    What do you think of the interlocutory appeal provision for Markman rulings? For litigators, I think this is the most disruptive provision of the entire bill, since every Markman, bar none, would be appealed by the loser [or losers] and the action stayed for what will probably be 18-24 months. I can see a situation where eventually every district court patent action is stayed, waiting for the bottleneck at the Federal Ciruit to clear.

    I think someone needs to think this one out a little more.

  89. With the change to Inter Parties Reexam, would an infringer be able to keep a patent tied up in multiple reexams by filing a reexam on one reference at a time? If so a well heeled infringer could, in theory, keep a patent tied up and effectively unenforcable for its entire life. That tactic has been used in the past, I personally had to deal with 4 reexams of the same patent which kept litigation stayed for years.

  90. Q: does a reference published one day before filing now become a statutory bar reference?
    A: I believe the answer is “yes, unless you can show that the reference is describing your own work”

  91. clueless: yep. Any third party publication dated before the filing date is prior art, and there is no way to swear behind it.

  92. So I clearly haven’t read up too much on the ‘first to file’ changes.

    So do traditional 102(a) / 102(b) distinctions go by the way side? i.e., if you can’t swear behind a reference, does a reference published one day before filing now become a statutory bar reference?

  93. Saying there is currently a “one year grace period” for the prior art of others isn’t really correct.

    Those references are still prior art references under 102(a). While you can swear behind them with the presentabtion of an declaration and some corroborating evidence, that isn’t always possible.

  94. This bill has a retroactivity problem. Sec. 13 provides that the Act will take effect one year after its enactment and “shall apply to any patent issued on or after that effective date.” So any application pending on the effective date will suddenly be subject to the new law. Applicants who acted in accordance with the old law might unexpectedly find themselves prejudiced and with no means of fixing the problem. For example, an applicant relying on the current first-to-invent law could find his or her interference rights irretrievably swept away. This problem may be avoided by specifying that the new law applies only to applications filed on or after the effective date.

  95. Should the modification of re-exam estoppel survive committee? I think a reasoned answer would require analogizing to some other federal agency that, like the USPTO, primarily adjudicates rights between private entities rather than between individuals and the government (for instance, tax liability [IRS] or operation of a radio station [FCC]). The first analogy that comes to mind is the NLRB …

  96. Question for the collective wisdom…in the bill, one way to still be liable for willful infringement is if the accused is by “continuing to sell the infringing product after being adjudge an infringer.” This is related to a question I have under the eBay case. Let’s say a patent owner files an infringement suit, but never asks for a permanent injunction. The win the infringement case and are awarded damages. Since they did not ask for a permanent injunction (or any other equitable relief), I don’t think that the eBay case can be fairly construed as giving the infringer the right to some sort of ongoing license (agree?). By taking this route, can the patent owner then lay the groundwork for a second lawsuit if the infringer continues to infringe – this time with willful infringement and perhaps attorneys fees much more likely to be awarded? I see all sorts of other issues and potential problems here, but perhaps in the right case that may be the better approach for a patent owner to take.

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