Patent Reform: First to File

Patent Reform 2009 is rolling along. The Senate Judiciary Committee has approved an amended form of S.515. Some notes on the first-to-file portion of the amended bill: S515Amended.pdf

·         First-to-File: One of the greatest changes to ordinary prosecution would be the move to a system where the effective date of invention is the filing date. This means no more swearing-behind prior art based on the date of the invention.

·         Effective Date: The language of the bill would define a the “effective filing date” of “the patent or application” as “the filing date of the patent or application for the patent containing a claim to the invention” or the earliest §§ 119, 120, 121, or 365 priority date associated with a document in which the “claimed invention is disclosed in the manner provided by the first paragraph of section 112.” (i.e., described, enabled, and best mode provided). The “claimed invention” is then described as “the subject matter defined by a claim in a patent or an application for a patent.’’ There appears to be is an important technical problem with this language because it considers the effective filing date of the patent or application as a whole. However, there are many cases where only some of the claims are fully described in priority documents. Under the language in S.515, the “effective filing date” of the patent would be the earliest priority date for any one claim in the patent. Thus, the provision would allow an applicant to reach-back to a provisional or parent document to claim an effective date for the entire patent document even if the priority document discloses information directed to only a portion of the claims.

·         Obviousness: To operate within the first-to-file schema, the obviousness provision needs to be keyed to the “effective filing date” rather than the “time the invention was made.” However, the proposed bill makes another couple of tweak to the provision. For instance, rather than looking at the “subject matter sought to be patented … as a whole,” the new provision would look to the “claimed invention as a whole.” Difference?

147 thoughts on “Patent Reform: First to File

  1. “What happens when two inventors file the same day? Suppose one files a badly disclosed patent application and another files a thorough well prepared disclosure?”

    Until human beings have evolved brains huge enough to solve these awesome problems, the patent system must not be changed. It may take several thousand or maybe even ten thousand years for that evolution to occur. But anything is better than the unintended consequence of a ponderous pile of junk patents like the one that is eating Tokyo as we speak.

  2. First to file fosters fraud. It’s 4F. The switch will change everything. Coupled with a push that you don’t even have to disclose your best mode, the Japanese model then you will truly have a ponderous pile of junk filings. I agree first to file is unconstitutional. In America it is all about bragging rights, not who got to the patent office first. Who invented what is still important. What happens when two inventors file the same day? Suppose one files a badly disclosed patent application and another files a thorough well prepared disclosure? The unintended consequences of first to file are not well understood. Why switch from a reward system to a franchise system like the EPC? What needs to change is the system for determining reasonable royalties.

  3. Mr Katznelson, I have downloaded your letter and will read it carefully. But, even now, I am alarmed by your assertion that the “own prior art” of corporate filers will not count as prior art against their later filings. Well, it does in the pan-European version of FtF, which IS small-entity-friendly. Personally, I think it’s a shame for small innovative entities in the USA that they too can’t enjoy the advantages of European FtF. European FtF does not suffer from the disadvantages you identify in the Bill (because European FtF started, in 1973, on a plain white sheet of paper bearing no trace of any sovereign State’s previous patent statute).

  4. Interesting academic discussions on FTF v. FTI by patent practitioners. However, if enacted, the impact would be much more than academic. The results for some of your clients would be substantive and tangible. This is not about you, the practitioners. Many of the patent reform provisions proposed by the entrenched market incumbent companies would seriously harm new entrants. We chose to narrowly focus on proposals to amend Section 102 because no one else does. Your clients may be inclined to agree with our position stated in a draft startup company group letter to senators (posted for your review on
    link to works.bepress.com ). If so, please have them contact me directly at ron@bileveltech.com with their company’s legal name and city so that they can be added to the list.

    Any comments on points made in the letter are welcome.

    Thank you all.

    Ron Katznelson

  5. Geesh, what’s next, angels on the head of pin? Rather than blather on and on about what one thinks the Constitution means it would be a lot more interesting to hear opinions on what the effect of moving to FTF means on various patent applicants.

    Having worked for both large and small organizations I can argue it both ways. Small organizations can be more nimble than large ones (who often have ponderous procedures that the inventing engineers want to avoid like the plague, that are in place specifically to limit the number of patents filed, and that favor the incremental over the groundbreaking).

    On the other hand, small organizations are inherently resource limited, both in terms of time and money, so patents they might like to file can get pushed off to a date far in the future.

    I’m inclined to prefer FTF, which eliminates at least some of the record keeping costs and which eliminates the potential cost of an interference proceeding.

  6. spell checker yes Ithink it was sept or oct. of 73 it was in the original personal computer invention group I did with huelett packard in palto alto.I still havent used to use it though.

  7. Dear Lionel,

    Re: “Malcolm, really?”

    May I offer an alternate view penned by Mr. Noise above Law above?

    After explaining to Malcolm that “the patent will still only issue to the inventor”, Mr. Noise above Law went on to say”

    “A slight nuance, but then again you are only a fool provocateur pretending to be an attorney and we expect this level of sloppiness. You will have to try a little harder to be actually provocative though.”

    I tend to agree with Mr. Noise above Law. Malcolm has made some pretty lame statements, especially lately.
    Perhaps Malcolm has “cracked” or is on an extended binge.

  8. Lionel, going back to my hypothetical of the inventor coming to the attorney on Monday, it will take a fair amount of Monday to explain the situation to the inventor and get him to sign off on the waiver.

    Plus, in many states it may be unethical to ask a client to do this.

    Also, to underscore the point, in my hypothetical, the attorney did file within the same week and still got sued. Adding your hypothetical facts that the attorney was paid triple his/her normal hourly billable rate, I doubt if that makes up for the losses when the attorney gets sued.

  9. “”the Constitution also mentions “inventors”. So presumably non-inventors cannot be granted patents.”

    LOLOLOLOL.

    So now assignments are unconstitutional?”

    Malcolm, really? You know what the guy meant. Now you are just picking a bad wording from someone who I believe you predominately agree with.

  10. American Cowboy,

    That is a problem. However, I believe it will be solved by a tiered payment system. The Client/Applicant agrees in writing that the attorney has X amount of time to complete the application and that the attorney will not be held responsible if intervening art is published or filed prior to the filing of the Client’s Application. If the client wants it done in a week, then the client can agree to pay triple your normal hourly billable.

  11. “Yes [102(g)(2)], and that will go away. Is that really a huge loss? First-to-file is more in line with the rationale for patents in the first place, the dissemination of information.”

    If dissemination of information was the goal, then we would be discussing First-to-Publish, not first-to-file. See:

    link to abanet.org

  12. Snake Fist,

    Let’s not lose sight of the issue here. Who did the Framers understand to be the “Inventor”? That is, who was the “Inventor” that the Framer’s intended to grant the exclusive right? This argument is important because, in my opinion, Congress would act ultra vires to enact FTF system which precludes the first and true inventor from being granted a patent. If it does come into law, the Supreme Court would first look at the Framers’ understanding and intent of whom is the “Inventor.”

    As you state, there is a presumption, one that the Framers intended “the first and true” inventor to be granted the exclusive right; I’ll even go further and state that there is a rebuttable presumption. First, the historical facts that I am aware of — from the respected constitutional jurist Justice Story to Walterscheid’s historical review to the introductory comments by the author in my IP case law textbook — clearly point to a Framers understanding of “the first and true” inventor.

    Second, no one has presented facts that support that the Framers intended in 1787 to define the Inventor as someone other than the first and true inventor such as the fastest FTF. In fact, according to Michael F. Martin who has added to this thread and who provided a link to his soon-to-be published paper, when Section 5 of House Resolution 10 was introduced in 1789, the Resolution included a provision to decide priority. (Martin, p. 26). The fact that priority was even mentioned shows a clear indication that Congress in 1789 anticipated that there would be “first and true” inventor disputes. From the facts that Martin provides, the provision was shot down not because more than one system had been known but because it provided for a jury trial. Had the Framers intended another system other than the first and true inventor standard, there would be no need to even raise the issue of priority. I haven’t seen and no one has presented persuasive facts to rebut the presumption that the Framers intended anything but first and true inventor.

    Martin has presented some facts in rebuttal, but he fails to rebut the presumption. In an earlier post of this thread, Martin states that “[o]ne of the drafters (Randolph) did not understand it to be inconsistent with the Constitution that he helped draft when he suggested it in the first interference proceeding between Fitch and Rumsey after the first Patent Act had been passed in 1790.” This is not what Martin says in his paper. In his paper, Martin writes “Randolph appears to have suggested that priority be awarded to the first applicant.” There are at least three reasons why Martin has failed to rebut the presumption.

    First, Martin is inconsistent with the statements made in this thread and those made in his paper. In this thread, Martin positively asserts Randolph “he suggested”; however, in his paper, Martin states that “appears to have suggested.” Which is it: he “suggested” or “appeared to have suggested”? “Appearing to suggest” and “actually suggesting” take on two different meanings.

    Second, it was a mere “suggestion” in Martin’s paper. Martin doesn’t state that Randolph “argued” for FTF, “asserted an affirmative position” for FTF, “insisted” on FTF, “dissented,” or held a position that first and true inventor was wrong and inconsistent with the Framers intent. Moreover, Martin’s argument lacks any facts to show that Randolph made any overtures after the proceeding to have the Patent Act changed or amended. If the contentiousness of determining the first inventor was such an ordeal for Randolph that further proceedings could have been easily avoided in the future by going to a FTF system, Martin has not presented any facts that Randolph’s statement was anything more than a mere suggestion.

    Even if I assume for argument sake that Randolph did indeed make a suggestion and not give the appearance of one, there is a rather simple explanation why such suggestion was made. Two inventors were claiming an invention of a steamboat. At that time in the infancy of our republic, each State of the Union was issuing patents, and that each inventor had patents from states which differed from the other. This was a unique occurrence that is not capable of being repeated. When Randolph made his suggestion, he was faced with a battle of the patents. It was under this context that Randolph made his suggestion. Martin has presented no other facts to show that Randolph actually advocated for FTF to Congress to avoid future challenges to claims of first inventorship.

    Third, Martin has stated that Randolph was one of the drafters, but he has not presented us with any facts to show that Randolph was the author of the Clause or what role, if any, he might have played in crafting the IP Clause. However, Professor Oren Bracha has stated that no attention was given to the IP Clause in 1787. On p. 273 of his commentary, he notes that when it came to the IP Clause, “[t]here was hardly any real reported debate or deliberation regarding the intellectual property clause. It was adopted in the constitutional convention without opposition or debate, and attracted almost no attention or reference during the ratification stage.”

    link to obracha.net

    Given Martin’s inconsistent positions, Randolph’s “apparent” “suggestion,” the desire to settle a dispute between competing States’ patents, and the adoption proceedings of the IP Clause, Martin is far from being persuasive and falls way short of rebutting the strong presumption that the Framers intended the first and true inventor to be the “Inventor” of the IP Clause.

    If you wish to rebut the strong presumption, please provide some other facts to support a rebuttal of the presumption that the Framers in 1787 intended the “Inventor” to be the FTF. That is, please give some other facts to rebut the presumption that the Framers wanted someone other than the first and true inventor to be the “Inventor” granted the exclusive right found in a patent.

  13. I reiterate my opening comment: The problem with first to file is that it makes 100% of applications “rush jobs.” Inventor discloses invention to his attorney on Monday. Attorney is busy with other stuff and does not get the application filed until Friday. Inventor loses out to applicant who filed on Wednesday. Attorney gets sued for malpractice for the four day delay.

    OR- He works until 11 pm on Monday, doing the best he can to put in disclosure in application form to efile it on Monday, and 6 comes on this board to tell us what crap he has to examine. And don’t say that having one or more provisionals to file in the interim saves the situation — the same rush issue is involved with each provisional application preparation.

  14. So, I guess the year to “test the waters” under 102(b) gets shot to hell. If that’s the way it’s going to be, I think we should increase the lifespan of provisionals to two years.

  15. And those sons of bitches also want a new one world currency. Yet most of the world is already enjoying the benefits of Dollarization.

    If any sons of bitches insist on harmonization, let them harmonize with us. Notwithstanding all our glaring flaws, the United States is the superpower, incalculably ahead of all the rest, and with that influential status comes our responsibility to lead.

  16. You boys better start looking for other work. These sons a bitches are going to introduce a one world patent. The name of the game will be the protection of national sovreignity based upon patent grants to foreign interests that undermine the civil rights and national security of the nation. It is going to be a fun time in the city. I do look forward how history will paint the last 35 years of federal government as the era of treason.

  17. Technically speaking Malcolm, assignments are fully constitutional, as once an inventor is granted a patent, the property rights of that patents can be assigned. In fact, the property rights of applications can even be assigned, yet the patent will still only issue to the inventor.

    Did you ever notice that corporations cannot be granted a patent? Patents are ONLY granted to individuals (those individuals listed as inventors).

    A slight nuance, but then again you are only a fool provocateur pretending to be an attorney and we expect this level of sloppiness. You will have to try a little harder to be actually provocative though.

  18. “the Constitution also mentions “inventors”. So presumably non-inventors cannot be granted patents.”

    LOLOLOLOL.

    So now assignments are unconstitutional?

  19. Ordinary Inventor: I agree with you almost completely, but in addition to “limited times” and “exclusive right”, the Constitution also mentions “inventors”. So presumably non-inventors cannot be granted patents. To the extent Jim H. means Non-Inventor B cannot steal the idea of Inventor A and get a patent by filing first, I agree with him; but to the extent he means Person C who independently invents the same invention is not an inventor and cannot get a patent, i.e., there is only one inventor of an invention and he was the first to invent it, I disagree that the Constitution requires that outcome. After all, the same clause controls the copyright system, and it recognizes independent authorship.

  20. The Framers’ intent by enacting the patent clause of the Constitution,

    “The Congress shall have Power
    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;”

    leaves little to the imagination. It is within Congress’s discretion whether or not to have a patent system; if Congress elects to enact a patent system, the Framers specifically require “the exclusive Right” be given for “limited Times.” Anything else is left to Congress’s discretion.

    That being said, there’s no farkin good reason to change “first to invent.” If it ain’t broke don’t fix it. Moreover, what about the historic precedent of FTI? Statutorily and by common law, FTI is embedded in our patent system. In eBay, Justice Roberts’ concurring opinion said:

    “When it comes to discerning and applying those standards, in this area as others, ‘a page of history is worth a volume of logic.’ New York Trust Co. v. Eisner, 256 U. S. 345, 349 (1921) (opinion for the Court by Holmes, J.).”

    HAPPY EASTER – God bless everyone.

  21. Jim H.: Okay, but no one disputes that U.S. law has always required FTI – of what value is that observation? It shows only that FTI is permissible under the Constitution, not obligatory.

    Story’s opinion that the inclusion of a patent provision in the U.S. Constitution is “attributable” to the Framers’ knowledge of the existence of the British patent system, at best shows only that the latter provided the impetus for including the former, not that the former must be interpreted in light of the latter. For example, I may think my neighbor’s backyard shed is a good idea, and I may suggest that my architect consider building a shed for me as well, but that doesn’t mean I want him to build the exact same shed.

    I see the chain you’re building, but its a very long and weak chain built on non-authoritative commentary full of debatable presumptions.

  22. curious,

    “the Constitution is not an issue IMHO”

    It depends.

    If you’re interested in the pros and cons of FTI v. FTF, then it really isn’t an issue.

    If you’re interested in whether Congress would act ultra vires in enacting FTF, then it is an issue.

  23. Snake Fist,

    “you can’t use the existence of interference proceedings to bootstrap a requirement for “first and true” into the Constitution”

    Who’s trying to bootstrap the Constitution? If you re-read my comments, I stated that the “first and true inventor” objective standard has always been the LAW in the United States.

    I will state, however, that the Framers understood the “Inventor” as used in the Constitution to be “the first and true inventor” objective standard as the British provided in the Statute of Monopolies.

    The following is stated by Edward C. Walterscheid:

    “the Framers desired to give Congress authority to emulate or follow the existing British practice of granting exclusive rights through the issuance of patents[.]”

    link to cyber.law.harvard.edu

    Walterscheid also states that “the intellectual property clause was intended to give Congress authority to emulate the British patent and copyright practice and that the reasons for this authority were the same as those set forth in Britain was well understood in the early republic.”

    Moreover, according to Justice Story, the Framers had the knowledge of the common law and statutes of Britain at the time when crafting the IP Clause. “As Justice Story put it: ‘It was doubtless to this knowledge of the common law and statuteable rights of authors and inventors, that we are to attribute this constitutional provision.’ 3 Joseph Story, Commentaries on the Constitution of the United States § 1147 (1833).” (quoted from Walterscheid)

  24. Jim H.: I have to disagree with you. The fact that “first and true” has always been the standard doesn’t mean the Constitution requires it, and you can’t use the existence of interference proceedings to bootstrap a requirement for “first and true” into the Constitution.

  25. I know that this is off topic, but I just received two Office Actions and both had restriction requirements. Each of the independent claims in each of the applications was considered to be a different invention even though there were only small differences between them. I guess the Patent Office only wants to examine one independent claim per application. I have been in private practice for nearly three decades and up until the last three or so years, such restriction requirement would not have issued.

  26. “Yes [102(g)(2)], and that will go away. Is that really a huge loss? First-to-file is more in line with the rationale for patents in the first place, the dissemination of information.”
    This country boy thinks so. Current 102(g)(2) law allows the real first inventor in the U.S. the option of relying on commercialization efforts to rebut abn, suppress, conceal, as you ARE making the invention publicly known w/o backlogging the PTO. Congress will sacrifice significant IP options of industry on the altar of bureacratic convenience.

  27. “Under current law, Monday = a 102(g)(2) defense if made in US and no abn, suppress, conceal. first to file will eliminate this potent line of attack on patents. law of unintended consequences, a specialty of Congress.”

    Yes, and that will go away. Is that really a huge loss? First-to-file is more in line with the rationale for patents in the first place, the dissemination of information.

  28. Dear Malcolm,

    They say you are dumber than a bag of hammers;
    I disagree, because when you are funny you are at your best and people criticize you less.

    Stick with the funnies. This comment has been dictated into Dragon V 10.

    This is not to say those who read your comments merely consider you to be the Blog-Jester.
    You are better than a Blog Jester, but not by much. I suggest a new shrink, perhaps a reevaluation of your prescriptions; perhaps retirement, or a new job, for example, working side-by-side with number six. Have a nice day, and oh, don’t be so shy — speak out speak your mind don’t hold back let it all hang out

    By the way, Dragon V 10 also has a spam filter, for example, you cannot say fark you — with letters “uc”.

  29. Sorry bubbers although we invented everything concerning websites we havent been paid for any of it.So glitzy websites are not high on our priority list we dont care to spend the time and if we created something new it would be stolen anyways so whats the use.

  30. Lionel Hutz,

    “It’s a good thing there is nothing in our Constitution or laws that says first and true inventor.”

    You’re wrong, Lionel, and you know it. Absent the magic words, the “first and true inventor” objective standard has always been the law in the United States. If not, how can you explain the presence of the interference proceeding.

  31. Hey Michael R. Thomas, the world’s only inventor of significance,
    How about if you invent a website that doesn’t look like it belongs on geocities.

  32. First to file works just fine at finding the first to invent except in cases of devulgement or evesdropings.The odds of you and another person concieving the same invention at the same time are astronomical.My patent reform plan allows other methods to come into play when disputes arrise in the 90 day period following filing such as using the provisional patent as an inventors notebook to determin intellectual domination of the conception.

  33. “If you invent something on Monday and I independently invent it on Tuesday. I have still invented it. If I file a patent on “]MY invention before you file a patent on YOUR invention, tough.” Under current law, Monday = a 102(g)(2) defense if made in US and no abn, suppress, conceal. first to file will eliminate this potent line of attack on patents. law of unintended consequences, a specialty of Congress.

  34. “Even if I were to agree with you that you and I are inventors, I would be the “first” and true inventor, and you would be the “second” inventor. Using the objective standard of “first and true inventor” found in the language of the SoM in 1624 and used by the King’s Bench to extend the SoM to include an importer of products and processes in 1691 (See Martin’s paper, pp. 9-11), your winning of the race could not defeat my claim because second to invent would not prevail as you suggest.”

    It’s a good thing there is nothing in our Constitution or laws that says first and true inventor.

  35. “I direct your attention to the endless self-interested rantings of a certain commenter here.”

    Malcolm, meet Malcolm.

    oh, you mean that Other commenter of endless self-interested rantings…

    hey 6, Malcolm wants you to meet somebody.

    6,

    shoot, he’s out probably having drinks with Einstein.

  36. broje: “In particular, the mythical “basement inventor” may not have the resources to reduce the invention to practice as quickly as the mythical “evil corporation.”

    It is very easy to describe an imaginary “problem,” as you have just demonstrated, but much harder to defend the problem as one that justifies more than a few moments (seconds or minutes at most) of consideration.

    Here’s a news flash for you: people who lack “resources” and/or who try to make a living out of things that they do in their “basements” will always be at a disadvantage relative to those who (for whatever reason) have resources.

    Also, if you own a basement or garage that you can devote to “inventing”, you are already many steps ahead of most people in this country, and the world for that matter.

    Please get real, and get a clue. Because here’s what’s going to happen, as many of us realized years ago: the US is going to have a first to file system, just like the rest of the world.

    The change has nothing whatsoever to do with the imaginary disenfranchising of so-called “basement inventors.” And let me remind everyone for the billionth time: nobody cares about “basement inventors” or “ordinary inventors”. The public’s empathy people who claim such titles is approximately zero. If you wonder why that is the case, I direct your attention to the endless self-interested rantings of a certain commenter here.

  37. Many who comment here appear to truly not get it. The more serious issues are not just FTF. Rather they are the redefinition of prior art. It is one thing to amend Section 102(g) to address interference concerns, but quite another to amend all of Section 102 with a sledgehammer to redefine what prior art means.

    Comments from “6” on “3 days to draft an application” also show that some misapprehend aspects of our concerns. It should be made clear that our concern in this respect is not primarily about the haste under which applications would be *drafted* but rather the limited material *available* to be included in such hastily submitted applications. Our concern is the effects and implications both for the inventor, who must file prematurely, and for the public. No, drafting time is not the issue. In my testimony at the FTC hearings on IP markets, (available at link to ftc.gov. ) Slide 7 shows that 13% of *priority* applications are filed more than 1 year after an invention disclosure is made. Does any one think that it takes more than one year to *draft* the application? Of course not. What, then, is going on during that time? Did anybody study that? Has anybody seen data to suggest that this should be dismissed as having no bearing on patent rights, patent quality or incentives to enable and disclose best modes?

    I would have more to say on all of the other comments above in a later post.
    Suffice it to say that it is evident that several of the parties commenting here have not studied or thought through the real implications of this Section 102 rewrite. For example, further study about the “benefits” of removing interference proceedings would have revealed the big FTF myth propagated by its proponents. Interference proceedings would be replaced by no fewer “derivation” proceedings because first inventors would be unlikely to just cede priority to first filers without attempting to discover possible derivation from their prior invention. Importantly, the legal standard for proving derivation requires a showing of earlier conception by the party alleging derivation [Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993) (Derivation is a question of fact. To prove derivation, the movant must establish *prior conception* of the claimed subject matter *and* its communication in some way to the adverse claimant.); Brand v. Miller, 487 F.3d 862, 869 (Fed.Cir.2007) (To meet the burden of proof on derivation, a claimant “must make two showings. First, he must establish *prior conception* of the claimed subject matter. Second, he must prove communication of that conception to the patentee that is sufficient to enable [him] to construct and successfully operate the invention.”) (Internal citations and quotations omitted)]. Thus, all derivation proceedings would in fact contain proceedings to *determine the first inventor* and the purported “judicial efficiency” of repealing Interferences is mere speculative folklore lacking any legal basis or factual support. Does S.515 codify a different standard for showing derivation? I cannot find one.

    More to come.

    Ron Katznelson

  38. Lionel Hutz,

    “The flaw in your theory is you do not understand what the word invent means. If you invent something on Monday and I independently invent it on Tuesday. I have still invented it. If I file a patent on “]MY invention before you file a patent on YOUR invention, tough.”

    Even if I were to agree with you that you and I are inventors, I would be the “first” and true inventor, and you would be the “second” inventor. Using the objective standard of “first and true inventor” found in the language of the SoM in 1624 and used by the King’s Bench to extend the SoM to include an importer of products and processes in 1691 (See Martin’s paper, pp. 9-11), your winning of the race could not defeat my claim because second to invent would not prevail as you suggest.

    Tough breaks, Lionel, but I look forward to any supporting documentation of which you may provide in rebuttal.

  39. Lionel Hutz,

    “You do realize the king granted to monoplies to whoever he wanted. The king decided who the inventor was.”

    Well, eh…perhaps at one point in history, but according to Michael F. Martin’s paper to which he provided a link above, “[t]he purpose of Parliament in passing the Statute of Monopolies was to curtail the crown’s abuse of all letters patent, including not only patents of invention, but patents of importation for the introduction of foreign products and processes (both new and old), patents of registration for the licensing of certain businesses (such as ale houses), and other patents that restricted industrial competition, particularly in export trades. The role that the Statute of Monpolies played in establishing an English system for patents of invention has been called ‘a curious side-effect, a quirk of history.’”

    “I know a little about the history of patents back to England.”

    Yes, Lionel, I can tell that the little bit you know appears to be limited to the time before the SoM was passed.

    Also, please note that my quote of “to the true and first inventor or inventors” was taken from my case law text book, so I’ll defer to the author’s words over yours.

    Also, to avoid a patent from falling being considered as a monopoly, Martin’s paper states that “‘any letters patents and grants of privilege’ for the ‘making of any manner of new manufacture … to the first and true inventor or inventors of such manufactures which others, at the time of the making of such letter patents and grants, did not use’” was excepted from being considered a monopoly. That is, although a monopoly, an exception was made for the patent of the first and true inventor allowing him to have a monopoly which the patent provided.

  40. You all are going to need a bigger boat…

    Posted by: Jaws(TM) | Apr 10, 2009 at 04:55 PM

    Hey, that’s my line!

  41. “The seminal document in the history of English patent law may be found in the Statute of Monopolies, 21 Jac. 1 c. 3 (1624) which allowed for the Crown to grant patents “to the true and first inventor or inventors[.]”

    Even if I were to agree with your assumption that there may be more than one inventor, the above historical basis provides the patent be awarded to the “first” and true inventor.”

    Wow! No offense, but that is one ignorant statement. You do realize the king granted to monoplies to whoever he wanted. The king decided who the inventor was. There was no objective criteria. Do not know about the Venice law myself, but I know a little about the history of patents back to England. Copyrights were also handed out to publishers by fiat.

  42. Jim H,

    The flaw in your theory is you do not understand what the word invent means. If you invent something on Monday and I independently invent it on Tuesday. I have still invented it. If I file a patent on “]MY invention before you file a patent on YOUR invention, tough.

  43. “On the other side, many, such as Ron Katznelson, who I respect greatly for analyzing the “real” data (not speculating, conjecturing, or simply opinionating on what that data might be) have come up with other contervailing arguments, including potential effects on Davids of Innovation who may be less likely to win the “race to file” in the PTO, and thus be shut out, versus the Goliaths of Industry. In this regard, see Ron’s concerns expressed on Patent Docs blog.”

    This person obviously has no idea what goes on withing corporate behemoths. David’s will be faster than Goliaths at least half of the time.

  44. Mr. Palmer,

    You pretty much nailed it.

    But there is one factor I don’t see mentioned that I think deserves consideration and discussion. In particular, the mythical “basement inventor” may not have the resources to reduce the invention to practice as quickly as the mythical “evil corporation.” Since we have much love in the USA for the underdog crazy basement guy, going to a first to file system rather cuts against our grain.

    But, it is no surprise to see first to file in the patent reform measures, seeing as how the patent reform is being sponsored by the soul-free, and therefore evil-incapable, corporations. The crazy basement guy is a problem for the innocent corporations because of those pesky patents he generates that inevitably wind up in the hands of the oh-so-nasty patent trolls.

    But the patent trolls were sent by the PTBs to punish the poor, innocent corporations for failing to innovate in every possible way at all times, every day, and faster than the crazy basement guy. Is putting the trolls out of business really a good idea? Isn’t the cost of patent litigation a justifiable expense of the patent arms race that motivates innovation and enabling disclosure at the fastest possible rate?

    I’m not saying the result is any different. But it’s fun to talk about.

  45. I’ve always favoured a first to file system. In every country that has such a system there are safeguards against ‘stealing’ an invention and filing it as your own.

    As for Article 1, Section 8, of the constitution, it doesn’t define who the inventor is, so the statute can define that in any reasonable way, including by adopting first to file.

    I’d say 3 to 4 days to draft a decent app, but it depends, and it certainly takes longer if the inventor keeps adding stuff (you know who you are, LOL!). It can also take longer depending on complexity, but there are still a lot of quite complex things that can be drafted in that time frame. What matters more is the quality of the disclosure and/or other materials you have to work with.

    A really good provisional might take a day less (no claims). There are even people out there who draft claims for a provisional, so it could take them just as long as a regular app (I don’t believe that’s necessary, but that would be another thread altogether).

    If you file the disclosure document as the provisional, while kissing your lucky rabbit’s foot and and praying to several deities while spinning around three times backwards that it includes everything for 112 support, then it can take hardly any time atall. Read New Railhead v Vermier and then tell me if you feel comfortable doing that. Of course, sometimes there’s no choice, i.e. the inventor has boarded the plane on the way to the conference to tell all, and you would actually like to be able to file overseas.

    I really doubt if this will make any difference to how quickly anything gets filed, or whether provisionals are filed first. Hopefully, the backlogs in different firms will approximately cancel out.

    Of course, sometimes they won’t cancel out, and the second inventor will get to the patent office first, but at least the other guy won’t have to contemplate whether he can afford an interference. Derivation proceedings will only be started where there’s an allegation that one person got the idea from the other.

  46. Simultaneous invention, in most cases, is not grounds to tank a patent.

    Read our Constitution et al.

    You figure it out – I’m off for the weekend.

  47. Uh, Oh. 6 is right! It’s D! Simultaneous invention means it’s obvious, right? So no patent for either of them.

  48. From a lay person’s perspective, first to file is a just a way in which the big guy can legally steal from the small guy. You’ll have to be very quiet with your ideas in the future.

    And the funny thing is that it will be perfectly legal for you a steal someone else’s idea and patent it!

  49. If more than one person files a patent for the same “invention” within a short period of time shouldn’t the inquiry be aimed more at the obviousness of the invention than at which filer deserves exclusive rights to something that they both feel that they “invented?”

  50. “A: The first filer who put his money where his mouth is immediately, or the second filer who procrastinated or tried to keep it a secret?

    B: The first filer with an unlimited IP budget who willy-nilly files applications, or the second filer who performed additional tests to hopefully pass KSR muster prior to filing?

    C: Both (just to be provocative)

    D: Neither (to be more provocative)

    D, neither was the first to invent something if it cannot be shown that they were indeed the first.

  51. For those interested in seeing the forthcoming article on the history of the first-to-invent rule, it is forthcoming in

    IDEA: The Intellectual Property Law Review –

    also put together by the law students at Franklin Pierce.

  52. Jim H. says:
    “Perhaps, but what if the filing isn’t defective?”

    Then your hypothetical is wrong, isn’t it? If Pharma got the invention from your disclosure, then filing based on that would be defective under an FTF version 102(f) (and probably a likewise version of 102(a) as well). If the filing is not defective, then doesn’t that require a changing of the facts in your hypothetical?

  53. Tim – If Congress can give patent rights to the 2nd inventor via 102b, then why can’t it do it with a 1st to file system?

  54. @Jim H: I think your argument re: “inventor” means “first inventor” is unlikely to be successful. Interference practice exists because there are two independent inventors. If the second inventor was not an inventor, he would not have any claim to a patent, and there would be no need for an interference.

    That is, “first-to-invent” presupposes there are multiple inventors-a first to invent and a second to invent. Interferences award the patent to the first inventor, they do not determine that the second inventor was not an inventor.

    In deciding which approach to follow, we have to decide which inventor we like better, the first inventor or the first filer. Currently, we like the first inventor, but I suspect that is largely due to our romantic image of first inventors that may drive your argument as well. There are sound policy reasons to award a patent to a second inventor who promptly discloses his invention to the USPTO.

    But to avoid our disagreement about the meaning of inventor, let’s say that two individuals invented something on the same day, and it is impossible to more finely determine seniority. Who should get the patent?

    A: The first filer who put his money where his mouth is immediately, or the second filer who procrastinated or tried to keep it a secret?

    B: The first filer with an unlimited IP budget who willy-nilly files applications, or the second filer who performed additional tests to hopefully pass KSR muster prior to filing?

    C: Both (just to be provocative)

    I submit the decision is really a policy matter and not really a constitutional matter. (FYI, I’ve been involved a few interferences and would be happy to see them disappear).

  55. Jim H. “If first-to-file becomes law, do you think a case will percolate up to the Supreme Court to decide whether or not such law in constitutional? ”

    Oh, maybe, in the same way a case “percolated up” to the Supreme Court to determine whether Hillary Clinton killed Vince Foster.

    Some idi0ts don’t give up, you know?

    Of course you do.

  56. The Constitution states that Congress “shall have power to promote…” not “shall promote…”, so establishing the patent system is completely optional because Congress doesn’t have to exercise its power. Furthermore, I don’t think that the Constitution can be read to say “you don’t have to have a patent system at all, but if you do then it MUST grant rights only to inventors”. I understand the contrary arguments that have been presented against first-to-file, but I don’t think they’ll win the day.

    However, I also don’t think that first-to-file will simplify anything. Every subsequent applicant will throw everything they have into attacking the sufficiency and validity of earlier-filed applications because, presumably, only the first-to-file a VALID application wins the prize.

    Here’s my prediciton: In a rush to file, X files a non-enabling, i.e., invalid, application; a week later, Y files a valid application. Y’s application is rejected over X’s. Y sues the Commissioner, asserting that X’s application is invalid and therefore Y’s aplication should be reinstated as the first-filed valid application.

  57. Hi Mike,

    Re: “Mr. Randolph went to church.”

    Me too – I’m off to church to find a church key.
    Only kidding, to lighten up on a dark day.

    Lord please hear my prayer – thank you for the blessing of yet another day.

  58. Censored-

    Two points, the definition of inventor includes the word “new”, can something be “new” a second time?

    Also, there is a public policy difference between the two scenarios you propose above. The reason for a patent from a public policy standpoint is public disclosure, thus there is a difference between a inventor theat works diligently and discloses later and an inventor who abandons.

  59. Willton (a mere law student),

    Sorry about that.

    “If the first filing was a defective filing (i.e. rejected under 102(f) or otherwise), then I don’t see why you would lose out.”

    Perhaps, but what if the filing isn’t defective?

  60. Also, given the occasion, I’d like to point out that the first interference was scheduled for a Good Friday, April 22, 1791. The proceeding was postponed until the following day because Mr. Randolph went to church.

  61. Willton (a mere law student),

    “If the first filing was a defective filing (i.e. rejected under 102(f) or otherwise), then I don’t see why you would lose out.”

    Perhaps, but what if the filing is defective?

  62. @Brad Pederson

    What we care about is the overall costs, not the costs of derivation relative to other interferences. Even if the derivation proceedings take longer than others, if they are a small percentage of interferences overall, then the overall costs of FTF are lower. Could you say what percentage of interferences are derivations?

    Thanks for posting those stats also. Clearly, some interferences are still being declared. But they seem nonetheless to suggest that fewer are being declared. You say that the reduction is proportional to the number of new applications, but going from 129 to 58 is a 55% reduction. I’m quite sure that the number of new applications filed didn’t drop 55% over that time period. In fact, I believe the number of applications has monotonically increased over the same period. Maybe you mean applications for interferences? But then if there were interference practitioners who knew that the interference was unlikely to get BPAI attention, then that would affect those numbers, would it not?

    On your argument about FTI being easier for inventors in universities, I don’t follow. Can you say more? It’s not clear at all to me why this should be so. Unless I’m mistaken, we’ve just agreed that interferences are a tough burden on small entities, and that those will go away except for derivation proceedings with FTF. Sure derivation proceedings are the most expensive of interferences, but since we have them under FTI anyway, that doesn’t cut either way. But I would argue it still cuts in favor of FTF because derivation proceedings, even if triggered more often under FTF, are still cheaper than trade secret misappropriation litigation.

    On the point about moving costs earlier in time and creating more pressure to delay publication until patent filing — those are costs and pressure that should be borne now under the FTI, but are pushed off under the dubious claim of priority to provisional applications. You can’t get something for nothing. Either small inventors and universities are going to play by the same rules as the large entities, or they shouldn’t expect to be able to get money from the same large entities for their IP. I just don’t understand why FTF makes it any harder for small entities to play by the rules. Every startup company I know is more focused and agile than the large companies that they end up being bought by (or, when the large companies are really slow) supplanting. Universities I believe are slower than startups, but that’s because university tech transfer offices are simply not organized (in terms of headcount or incentives) to play the role that the middle managers within organizations like IBM and AT&T did when applied research was vertically integrated. There are some universities that are late to the tech transfer game that have figured this out and started bringing in more private partners to assist, but the biggest universities are content with where they are and aren’t likely to change anytime soon. This dynamic has nothing to do, of course, with priority rules. And going from FTI to FTF isn’t going to make the people who think that applied research interferes with the purity of intellectual inquiry any differently.

    @Noise above law

    I did not sidestep the question. The issue is constitutionality. Besides the natural law, the federalist form of government had an impact on how that first interference was decided. The federalism that matters to the U.S. now is not the federalism of the United States, but the federalism of the United States with the rest of the world.

  63. X,

    “So you are admitting that someone can be an inventor under a circumstance where they were not the first to create something.”

    Yes, the Constitution is territorial, and I had an implied understanding the “first to create something” included “first to create something [within the territorial restrictions of the Constitution].”

    “What about a situation where person A came up with a widget, and then suppressed concealed and finally abandoned the invention. At a future date person B indepantly comes up with the same widget, files a patent application and gets a patent.”

    Included in the Constitution is the clause “to promote the Progress of Science….” I don’t see how by concealing the invention would meet this criterion. Thus, although A might lay claim to being the inventor, A should not be granted a patent.

    Also, under my definition, B could not be granted a patent because he is not the inventor; however, I can easily include in the definition to void recognizing A’s “first to create” status where he has abandoned, suppressed, or concealed to the determent of others. This would not be inconsistent with the Promotion Clause.

    I’m not sure 102(g) would apply here because A has not filed for an application in your hypo, correct?

    Good points, X.

  64. Brad–

    Yes. Smaller entities are basically already out of the picture when going up against the big guys–their only hope of obtaining and extracting value from patents often lies in partnering with someone with either $$, unique capabilities, or both.

    Do you believe that the availability of provisionals would put the small entities in a more advantageous position?

  65. “6, please try again. Try again to read what I posted on the other threads concerning this topic. OBVIOUSLY, the procedural rules relegating excess examiners to the dustbins are not yet in effect (and more onerous duties for applicants either), but the writing is on the wall. Learn to read what people actually post (rather than what you want to read) and learn to read the writing on the wall. Reading for comprehension is a wonderful thing when separated from reading just to find tidbits that reinforce a pre-conceived world view.”

    Noise, I do not, and I doubt if anyone else does, buy into your bs “the sky is falling” about examiners not having to search any longer. The statute is the statute. Not only is the statute the statute, the statute is not going anywhere. The patent system exists at the sufferance of the people as represented through their representatives, congress. Congress is nowhere near accepting a patent system where ONLY the applicant does a search. They, as with any reasonable person, would have serious doubts as to the trustworthiness of such a system.

    In short, never mention this bs again, it is outlandish and serves no other purpose than to show your bitterness at losing Dudas, and possibly real intellectual dishonesty with yourself and others. I refuse to discuss any more, I have devoted more time to the subject than I should have already. If you want to discuss it further, preface your post with a detailed explanation of how pigs fly if you would be so kind.

    Besides, even if what you said were true, and we would be shedding quite a few examiners in, say, 5-10 years, it wouldn’t affect me as I’d be an old hand by that time, if I hadn’t left already. So really, I couldn’t give a sht less.

    “While you may feel that way, patent law is supposed to benefit the public. The sooner the public is enriched with the knowledge of a new invention, the better. Even if a scientist is the first to invent something, it does the public no good if the scientist is not ready to disclose it, as the invention then remains secret with the scientist. So while it may be unfortunate that a scientist does not have the resources to acquire a patent on his invention before a second inventor of the same invention does, that should not matter to the public. ”

    You overlook the point mere law student. His point is that there is less incentive for the small scientist to pick up the project at all if he knows that there is a good chance he could lose the rights to big pharma because he hasn’t the means to patent before they do. And, presuming the scientist never picks up the project at all, it never gets worked on by him, whereas all other people who work on the project may fail (or their may not ever actually be any people who work on the project). In that event, the invention never even happens. Where is the benefit to the public then?

  66. Robin posted my point before I got around to it. Since she was the first-to-post, I guess she gets all the credit. I swear I thought of it first!

    Q: WILL F-T-F INCLUDE SOME SORT OF PROVISIONAL FILING, to help the little guy? And would it help, in any case?

    FTF will disproportionately reward well-heeled entities over other entites in those situations where both are working toward the same end.

    In situations where a less-well-heeled entity has something, it will have to work hard to keep it under wraps, and contain the knowledge so that disclosure can be timed effectively.

    THIS IS HARD TO DO, even with NDA’s, etc., especially where there is a need for co-operative development, where public funding is involved, or where a public facility needs to be used for development and testing.

    Provisionals in an FTF context may help with this.

  67. Jim H.
    “If I understand the FTF system, I would lose out on patenting the cure for the common cold because Pharma won the race to the PTO door by a day. Is an objective “reasonableness” standard of diligence being proposed under the FTF system? The name itself — first to file — suggests not.”

    If the first filing was a defective filing (i.e. rejected under 102(f) or otherwise), then I don’t see why you would lose out.

  68. So, Jim H, you can be an “inventor” even if you are not the first to come up with an idea, so long as the other guy is not in this country?

    So you are admitting that someone can be an inventor under a circumstance where they were not the first to create something.

    What about a situation where person A came up with a widget, and then suppressed concealed and finally abandoned the invention. At a future date person B indepantly comes up with the same widget, files a patent application and gets a patent.

    Is person B an inventor? Is that patent, though legal under 102, constitutional? Is 102(g) itself unconstitutional in your view?

  69. “I would think that a FTF system would still have a provision like section 102(f), which prevents the patenting of an invention that was derived (i.e. stolen) from another.”

    I hope that will be the case should it be made law.

    “Whether you do depends on how soon you file.”

    If I understand the FTF system, I would lose out on patenting the cure for the common cold because Pharma won the race to the PTO door by a day. Is an objective “reasonableness” standard of diligence being proposed under the FTF system? The name itself — first to file — suggests not.

  70. Robin said:
    “A rule that rewards the first to file may be easier and cheaper to administer, but it also discourages actual inventors who actually invent useful products but who may not have the time or money to immediately file a patent application when they invent something useful.”

    While you may feel that way, patent law is supposed to benefit the public. The sooner the public is enriched with the knowledge of a new invention, the better. Even if a scientist is the first to invent something, it does the public no good if the scientist is not ready to disclose it, as the invention then remains secret with the scientist. So while it may be unfortunate that a scientist does not have the resources to acquire a patent on his invention before a second inventor of the same invention does, that should not matter to the public.

  71. One problem with the first to file rule is that it may not be consonant with the Constitutional mandate that the patent system promote science and the useful arts. Under current U.S. law, a scientist or engineer who deeply understands science and technology, but who is not particularly familiar with the laws governing patents, may still be awarded a patent even though someone else was the first to file a patent application, so long as that scientist or engineer was the first, true inventor. A rule that rewards the first to file may be easier and cheaper to administer, but it also discourages actual inventors who actually invent useful products but who may not have the time or money to immediately file a patent application when they invent something useful.

  72. Jim H. said:
    “Say I am first to discover the cure for the common cold. I’m interviewed in the paper, and for the good of the people, I disclose the compound and choose not to file for a patent. My altruistic nature has got the best of me. I don’t sell it, but give it away. After reading the article, Pharma makes the compound and applies for patent the following week on the same compound. Question: Is Pharma the “inventor” entitled to a patent under the FTF system?”

    A different take on the previous question. I still invent the cure for the common cold. I’m interviewed in the paper, and for the good of the people, I disclose the compound and my intent to file for a patent. After reading the article, Pharma makes the compound and applies for patent the following week on the same compound. I’m too slow, and Pharma has beat me to the PTO door by a day. Question: Is Pharma the “inventor” entitled to a patent under the FTF system? Am I entitled to a patent under the FTF system?”

    I’m surprised you think this is a tough question. I would think that a FTF system would still have a provision like section 102(f), which prevents the patenting of an invention that was derived (i.e. stolen) from another. This provision forecloses Pharma’s opportunity to get a patent, as Pharma’s “invention” was derived from your work. So no, Pharma would not get the patent. Whether you do depends on how soon you file.

  73. X,

    If under the current system B is considered the inventor and the patent is consitutional under the current system, then B is the inventor and the patent is constitutional in my opinion. B is first to invent [in this country]. To me, jurisdictional bounds of the Constitution would be limited to the country.

  74. Michael:

    I disagree that there has been any kind of real change in the relative percentage to number of applications filed. Here are the numbers of inter partes (interference cases) declared from USPTO BPAI page – link to uspto.gov

    FY03 – 90
    FY04 – 86
    FY05 – 94
    FY06 – 129
    FY07 – 58
    FY08 – 66

    While there has been a general downward trend in number of interferences declared in the last couple of years, relatively speaking, there hasn’t been any significant movement in number of interferences as a percentage of total number of applications filed.

    Most of the interferences declared in the last decade are in the bio/pharma area where the USPTO uses computer software to search databases of claims with respect to chemical/pharma and bio terms for potential overlaps. In the other art areas, almost without exception, the interferences are limited to those provoked by a third party.

    In terms of costs, as an interference practitioner I also would question whether derivations are the cheapest interferences. More than 70% of all interferences are settled in the first year (the motion phase) of an interference where the parties are jockeying for position on what the interference is going to be about and whether the count for the interference is valid and both parties are entitled to make a claim to the count. The reason for this is that relatively early on it becomes pretty clear who has the earlier evidence on dates of invention. From my experience, the cases of derivation are actually more likely to be the ones that make it to the second year (the priority phase) of an interference because evidence of derivation generally is more relevant during this phase. There are always ways to get derivation issue brought into the motion phase, but in general the additional complication of alleging and proving derivation would more likely add expense, not reduce expense.

    Although the train may have already left the station on moving the US to FTF, my philosophical argument is that FTI is somewhat more favorable to smaller inventive entities and universities because it is relatively more forgiving and less expensive for those who are less experienced with the patent system. Clearly, a well thought out FTF system is better for larger entities that have a global scope and for entities that are more experienced with the patent systems across the world. But under FTF, the burden will be on less experienced inventors in the US to make themselves more aware of the patent system rules early on and weigh their options about the expenses/need/advantages of filing before any public disclosure. In the case of small inventors who don’t know the relative commercial merit of their inventions, this will move the expense of considering patents up earlier in their business plan. In the case of academic inventors, there may be increased pressure to defer publications until patent applications can be filed. A comparison of the relative number of patent applications filed by small inventors and universities in the US versus anywhere else in the world tends to support this theory.

    In my mind, FTI has always been more congruent with the sense of individualism and entrepreneurship that are the hallmarks of the American dream. Having one major patent system that is somewhat more favorable to smaller inventors helps the US innovation system take advantage of the fact that, as a nation built by immigrants, our population on average is more willing to take risks. Consequently, my sense is that the US has a broader and deeper pool of individuals and small businesses who are encouraged to be inventors and innovators. Whether these small inventors will remain a significant force in terms of innovation in the world of multi-national corporations and research institutions in the 21st century remains to be seen.

  75. “translation: indepth discussion concerning the bedrock principles of law are way over my head and I will never understand them, so I must belittle them and those who post against my views.”

    Noise above Law,

    Love how you responded to MM’s rhetorical nonsense.

  76. Patent reform without addressing the 103 and 101 issues that are facing the courts right now, is inadequate.

  77. A invents a widget. A publicly uses and sells the widget. A does not publish the widget. A is not in the United States.

    Some time later, B independently comes up with the widget. B files a patent application. PTO grants B a patent.

    So, is B an inventor? Is B’s patent, though legal under 102, unconstitutional?

  78. Hypotheticals for discussion re FTF system:

    Say I am first to discover the cure for the common cold. I’m interviewed in the paper, and for the good of the people, I disclose the compound and choose not to file for a patent. My altruistic nature has got the best of me. I don’t sell it, but give it away. After reading the article, Pharma makes the compound and applies for patent the following week on the same compound. Question: Is Pharma the “inventor” entitled to a patent under the FTF system?

    A different take on the previous question. I still invent the cure for the common cold. I’m interviewed in the paper, and for the good of the people, I disclose the compound and my intent to file for a patent. After reading the article, Pharma makes the compound and applies for patent the following week on the same compound. I’m too slow, and Pharma has beat me to the PTO door by a day. Question: Is Pharma the “inventor” entitled to a patent under the FTF system? Am I entitled to a patent under the FTF system?

    I don’t see a constitutional problem with the FTF system so long as the first filer is also the first to invent.

  79. Pope-

    You said “Correct. B doesn’t get it because he’s not the inventor, and A doesn’t get it because he waited too long.”

    Under the current law that might be true, unless the first inventor abandoned the invention. Under the new law I think you are worng as the whole point of first-to-file folks is that the “fist inventor to file” gets the patent and they explicitly argue that you can hae more than one inventor for the same invention.

    Personally, I think there can only be one inventor under the Constitution and thus first-to-file is unconstitutional.

  80. 6,
    “In case you hadn’t heard, the reason for the cuts is the budget, not apps doing their own search, and not a search no longer being required by statute.”
    6, please try again. Try again to read what I posted on the other threads concerning this topic. OBVIOUSLY, the procedural rules relegating excess examiners to the dustbins are not yet in effect (and more onerous duties for applicants either), but the writing is on the wall. Learn to read what people actually post (rather than what you want to read) and learn to read the writing on the wall. Reading for comprehension is a wonderful thing when separated from reading just to find tidbits that reinforce a pre-conceived world view.

    “…Let’s throw out the claim drafting session…” Even a bad examiner knows the claims are the meat of the application. No wonder your posts evidnece your cluelessness.

    “It will never cease to amaze me how much those who are supposedly the most concerned with the rule of law disregard the laws themselves so often.”
    This statement has no basis. Especially coming from the trickster who is so fond of making up his own versions of law, and personally deciding what is law and what is lawlol. Learn your lesson from Aaron.

    Malcolm,
    “Any additional analysis of that crap is a waste of time and bandwidth.” – translation: indepth discussion concerning the bedrock principles of law are way over my head and I will never understand them, so I must belittle them and those who post against my views.

    Jim H. and Michael Martin,
    I am really enjoying the give and take of your discussions. Is reliance on English law a positive thing when concerned with the founding fathers established? Wasn’t the establishment of US law decidedly different in some areas and decidely the same in others?
    Further, Michael, your poat at 06:18 PM Apr 09, 2009 sidesteps an important point that Jim H brought up regarding the example that you brought up with Edmund Randolph. It appears that we do have a very explicit example of how our founding fathers viewed the first to file vs first to invent protocols, and first to file lost. If first to file was what the founders wanted, Randolph would have carried the day and first to invent would not have been established in US law, no?

  81. The world is a bigger place.
    Interestingly, in the past there was no problem for a US inventor to swear behind the filing date of a non-US inventor. No one complaint that the US inventor might not be the true and first inventor at all. Mind, the US is no exception in this. In Holland, way in the past, patents were granted for inventions already practiced abroad, but still unheard of in Holland.
    These days, however, your typical market place may be US and Europe, with production facilities in the Far East, Latin America and other regions. Thus, your patent strategy will likely cover protection in the US and abroad. Thus, you would want to be the first to file anyway!
    A further argument to change is that patents for inventions have been granted since ancient past, not for the sole benefit of the inventor, but as it would benefit the society. The first to file system, in combination with the 18 months publication, ensures that the information is made available to the public quickly.
    (Personally, if we can harmonize across the globe in terms of filing system (first to file); grace periods; duty of candor and use a common language for patents (e.g., English) all in one go, then I think many will benefit.)

  82. Hi Dennis, just a thought from Europe.

    In going to “First to File” and tackling priority between rival inventors, you will exchange one demon, “Interference”, for something even worse (because it bites on most every filing, not just one in a thousand), UNLESS you learn from experience up to now in Europe. In contests between rival filers, it becomes all-important to be able to ascribe an unambiguous single filing date to every claim in dispute. That is practicable ONLY if you have the SAME rule for what a document discloses, whether it be i) the app as filed ii) the priority document (earlier declared filing date) or iii) the document relied upon to destroy novelty. I don’t see any sign of that, in the reform prposals.

    The single, all-encompassing test under the EPC for our equivalent to 102, 112, 119, 120 etc is “clearly and unambiguously deivable by the reader who is a person of ordinary skill in the art”.

    Which part of all that do your readers not understand?

  83. @Brad Pederson

    Thanks for chiming in. With respect to your article on FTI vs. FTF, I have a few comments.

    First, last year is not a good year for comparison since the PTO has basically stopped declaring interferences in anticipation of the legislation. If any PTO folks are reading this, don’t shoot the messenger!

    Second, we have a good estimate of the relative costs of derivation proceedings to regular interference proceedings because a small percentage of interference proceedings are, in fact, derivation proceedings. My understanding is that these are the cheapest interferences to litigate as a group, although it would be great for an interference practitioner who isn’t too scared out of their mind to comment to chime in here.

    Third, your point about promoting a diversity of reward schemes is very interesting, and I agree that that would be good. But do we want to promote diversity along the dimension of priority rules? I’m dubious. Seems better to promote a diversity of reward schemes by recognizing new eligible subject matter, maybe giving tax incentives to certain kinds of IP, maybe shortening or lengthening term, &c. The rules of priority are an uncertain way of accomplishing that diversity, and having different rules in the U.S. raises the transactions costs of prosecution for the rest of the world. We lose chips in every international treaty negotiation involving IP by insisting on our idiosyncratic rule. And what do we gain by maintaining it? The FTF rule does not favor large entities as some people claim because small entities are generally more coordinated and quicker at getting info to patent lawyers when something new and important needs to get filed. If that weren’t true, then how could startups be innovating faster than large entities in general? Some large entities will do better than some small entities. But on average, I think going FTF is at worst neutral and probably even favorable to the small entities.

  84. Malcolm,

    If first-to-file becomes law, do you think a case will percolate up to the Supreme Court to decide whether or not such law in constitutional? If so, do you think that the justices will decide the question on the construction of “Inventors” and whether or not Congress has exceeded its authority under the Patent Clause?

    Simple questions requiring simple answers.

  85. Dennis:

    In terms of your point on Effective Filing Date – I agree with Michael Martin that the “or” between 100(h)(1) and (h)(2) resolves the concern you mention in item 2 – (h)(1) concerns priority based on claims in the instant application, (h)(2) concerns priority based on disclosure of the claimed invention in a parent/priority application.

    In terms of your point on obviousness, the definition of “claimed invention” in 100(i) as “the subject matter defined by a claim in a patent application” seems to resolve any semantic differences between invention as a whole and invention as claimed.

    In terms of a couple of other items raised in the thread:
    1. The effective date of the bill (as it currently stands in S. 515 Section 17) would be that the new 102 provisions “shall take effect 12 months after the date of the enactment of the Act and SHALL APPLY TO ANY PATENT ISSUED [yes, they said date of issuance not date of filing] ON OR AFTER THE EFFECTIVE DATE.” As Phil Johnson from J&J noted in his testimony before the Committee, this is a classic changing of the rules of the game in the middle of the process for the 1 million pending applications, not to mention that continuation applications would be judged under FTF while their parent patents would be judged under FTI.
    2. There is a grace period, but is applies only in situations where either (a) the inventor publicly disclosed their invention before filing an application AND before the subsequent publication by a third party that would otherwise defeat a later filed application by the inventor that was filed less than 12 months after the inventor publicly disclosed – 102(b)(1), or (b) where a third party derived their public disclosure or patent application from the inventor.
    3. My concern about Effective Filing Date has less to do with priority and more to do with the problems caused by defining and using both “effective filing date” and “effectively filed” where the two terms have different meanings. Effective Filing Date means that Section 112 is met, whereas under 102(b)(4)(B) Effectively Filed means the first application where the subject matter is described.

    Consider the example where party A files provisional P1 in January and party B files provisional P2 in February, and B converts P2 to utility U2 in March and A converts P1 to utility U1 in April. Under 102(b)(4)(B), the language about what is sufficient disclosure to entitle an application to an earlier priority date as a prior art reference is “the filing date of the earliest application that describes the subject matter.” In contrast, as we all know, 112 requires that a patent application must enable the claimed invention, not just describe that subject matter. So, in the example above (assuming neither P1 nor P2 actually technically satisfies Section 112 for the claimed invention), party A is not entitled to a patent because utility U2 of party B is prior to party A’s utility filing date for U1. Conversely, party B is not be entitled to a patent because provisional P1 of party A has an effective prior art date of Jan under 102(b)(4)(B) which predates the filing dates of both the provisional P2 and utility U2 for party B. End result, neither side is entitled to a patent.

    I have been watching and writing about FTI vs. FTF for some time, See: link to cairns.typepad.com

    As described in my article, I would advocate staying with FTI if for no other reason than the lack of harmonization creates a diversity of innovation reward schemes across the world which, like biological diversity, is more likely to encourage investment in different kinds of innovation in different ways. With less than 0.05% of pending applications involved in interferences in any given year (last year 80 interferences declared out of almost 500,000 applications filed), the overhead for keeping with FTI really isn’t that great for the system as a whole, even if the costs are an order of magnitude higher for the 160 parties involved in the 80 interferences. Given the rush to harmonization, I am expecting that FTF will eventually become law, although I have concerns about whether the replacement “derivation proceeding” is actually going to really represent any kind of less expensive (and less utilized) procedure than the current interference practice.

  86. Censored GPope,

    “If guy A invents but doesn’t disclose, and then guy B invents and discloses via an application that is then published, and guy A doesn’t know and so waits for a year from the publication to file, then, according to you, the invention is no longer patentable?”

    Correct. B doesn’t get it because he’s not the inventor, and A doesn’t get it because he waited too long.

    “So clearly Congress can use a first-to-file system the exact same way. The only difference between the two is timing.”

    No, I don’t think Congress is empowered under the Patent Clause to enact a first-to-file system. Furthermore, you’re right about the difference being timing, and when you speak of a race, the focus becomes the faster racer and not the inventor. The Patent Clause states “Inventors” — not racers.

    “First to file is simple and effective.”

    Agree, and if the Patent Clause included language regarding efficiency of process, then I’d agree with the first-to-filers. Again, the word is “Inventors.”

  87. Some dude above me is trying to say that there is only one “true and first” inventor.

    So I say again . . .

    If guy A invents but doesn’t disclose, and then guy B invents and discloses via an application that is then published, and guy A doesn’t know and so waits for a year from the publication to file, then, according to you, the invention is no longer patentable?

    Now we all know that your “interpretation” is not the law. The law, as enacted by Congress, is that your “1st and true” inventor gets boned and can’t get his patent, and the “2nd, imposter” inventor gets the patent.

    Clearly Congress has used its power to bone the 1st inventor and give the patent to the 2nd inventor. Been that way since the beginning.

    So clearly Congress can use a first-to-file system the exact same way. The only difference between the two is timing.

    The principle, which has been around since Jefferson, is the same.

    This is no different than copyright.

    If you independently invent it, you’re an inventor.

    In the end, who cares?

    First to file is simple and effective.

    As for the malpractice insurance comments, what the h-ll is wrong with you people?

    Do you sit on applications or something?

    Every day that passes with that application on the shelf, undrafted, is another day of 102b art. Or another day for a 102g competitor to become senior.

  88. 6 blathered: “Come on though, how long does it take the draft an application if it is really imporant? 2 days max?”

    It depends. Do you want it quickly, cheaply, or done right? The first two, sure, 2 long, hard days assuming you have everything from the inventor. I might file a provisional that way if the client painted himself into a corner and needed to be bailed out. (e.g., big presentation Tuesday, must file!)

    Non-provisional, done right? Even assuming you immediately grasp the invention and the disclosure from the inventor is complete (no “oh, I forgot to mention…..”), much longer. Times 2+ for a non-complicated invention, assuming you do nothing else.

  89. @confused SCOTUS

    Maybe we’re looking at different sections of the bill?

    I’m looking at the definitions in Section 2. I think that’s the Section Dennis was referring to.

    In Section 2(h), the definition clearly applies only to the “effective filing date of a claimed invention” — not to the application as a whole.

    Moreover, as I said before, I believe the or at the end of 2(h)(1) removes the problem that Dennis seemed worried about (namely, that one claim might be used to give all claimse an earlier filing date). Sub (1) and Sub (2) work disjunctively. Sub (1) deems the filing date of an application or patent in which the claim actually appears as an appropriate “effective filing date of a claimed invention.” Sub (2) deems the filing date of an earlier provisional, non-provisional, or PCT application that provides adequate support (and complies with other requirements, such as copendency, &c.) an “effective filing date of a claimed invention” when such an earlier application is available for such a claim of priority.

    Either way, I think the effective filing date is specific to “a claimed invention,” and not to a patent as a whole. What am I missing?

  90. Michael F. Martin,

    Continuing from my previous post, the “first and true inventor or inventors” clause found in the SOM preceded Edgeberry and the court used the clause to include patents of importation under the SOM, correct? In other words, the “first and true inventor or inventors” clause was found in statute before case law, correct?

  91. Michael F. Martin,

    “Check out your English common law again. The Statute of Monopolies was interpreted to protect the first to import in Edgeberry v. Stephens, 2 Salk. 447, 1 Abbot’s P.C. (K.B. 1691).”

    Okay, I understand this statement and your cite of Edgeberry as an extension of the monopoly exception “to include an importer of products and processes in England.” (Yours at p. 11). Before this case, however, the statute exempted from being a classified as a monopoly “any letters patents and grants of privilege for the making of any manner of new manufacturer … to the first and true inventor of such manufacturers, which others … did no use.” (Yours at p. 10). The “exceptions” found in the SOM are those that can be considered a monopoly but for the exception, right? In other words, when we discuss exceptions, we are discussing exceptions from monopolies and not exceptions from patents, correct?

    I read your cited case as nothing more than extending the patent monopoly to include import patents.

  92. NAL : “Another winning legal argument”

    Any additional analysis of that crap is a waste of time and bandwidth.

  93. Michael Martin:
    “Actually, it’s possible to construe the ‘or’ between (h)(1) and (h)(2) as a solution here. The effective date is EITHER the filing date of the patent in which the claim appears OR the filing date of an earlier patent application or patent “in which the claimed invention is disclosed” under 112. Wouldn’t this permit for different claims in the same application to have different priority dates?”

    The answer to your question is no because the bill states “effective filing date OF THE PATENT APPLICATION” as a whole, not of a claim of the patent application.

  94. “I wanted to put it to 6 that given my earlier posts in light of the decision of the CAFC that applicants can be required to do the lion’s work of examination with MPEP level search, analysis and claim mapping, it is an OBVIOUS move for the Office to limit overtime. Guess what – next you will have NO overtime.”

    Thanks for “putting it to me”. In case you hadn’t heard, the reason for the cuts is the budget, not apps doing their own search, and not a search no longer being required by statute.

    As to the drafting, meh, how do you figure? People have said that an avg app takes around a week to draft, with semi decent claims. Let’s throw out the claim drafting session and just toss in overbroad crp, work through the night (this r important work!) and you come up with around 2 days. Maybe 3 if it is an extra long app. Hand draw the figures. I’m considering mech/elec apps, not bio apps, they might take 2 weeks for all I know.

    It will never cease to amaze me how much those who are supposedly the most concerned with the rule of law disregard the laws themselves so often.

  95. “You heard it here first folks, overtime for examiners limited to 10 hrs.

    Posted by: 6 | Apr 09, 2009 at 05:19 PM”

    Although curious already posted a response, I wanted to put it to 6 that given my earlier posts in light of the decision of the CAFC that applicants can be required to do the lion’s work of examination with MPEP level search, analysis and claim mapping, it is an OBVIOUS move for the Office to limit overtime. Guess what – next you will have NO overtime.

    “Come on though, how long does it take the draft an application if it is really imporant? 2 days max? Crap claims and just chuck everything in the disclosure.”
    Easy to see what you will NOT be doing after your lay-off 6.

    “Just shut up already, doofus.”
    Another winning legal argument by the fool provocateur, or “The zombie… that will not die.”

  96. “But it is revolting to have no better reason for a rule of law than that so it was laid down in the time of Henry IV.”

    Mr. Martin, I couldn’t have said it better myself. I hope you do a better job of citing your sources in your paper.

  97. @ Jim H:

    That part of my post was written under the (in my view) completely justifiable assumption that Congress *does* have the power to switch to first-to-file. The second half discusses why I think that assumption is completely justifiable. You should probably redirect your complaints there.

  98. “The Constitution does not provide Congress the power to grant an exclusive right to a non-inventor”

    Just shut up already, doofus.

  99. Ad Astra,

    “If Congress thinks that first-to-file is the best way to do that, that’s their prerogative.”

    No, not if they are not empowered to do so. The Constitution does not provide Congress the power to grant an exclusive right to a non-inventor, and the Framers understood that it was the first person to invent who was the inventor. No power, no preogative.

  100. @Jim H.

    By your own admission, what the committee decided that day is not the issue. The issue is what power Congress has under the Constitution’s intellectual property clause. The answer I have argued above is that there is no question that Congress has the authority to award the invention to the first-to-file. That was the custom in England at the time the Constitution was ratified. One of the drafters (Randolph) did not understand it to be inconsistent with the Constitution that he helped draft when he suggested it in the first interference proceeding between Fitch and Rumsey after the first Patent Act had been passed in 1790. And nobody present on that occasion objected to his suggestion on constitutional grounds.

    In fact, the first commissioner of patents William Thornton appears to have continued the practice followed in England of issuing patents to the first to import for quiet some time. It was not until the 1836 Act at the earliest that patents of importation were no longer recognized at law in the United States.

    I have an article forthcoming in the Franklin Pierce Law Review on the history of the first-to-invent rule. You can find a draft here:

    link to papers.ssrn.com

    I happen to like that the first interefernce proceeding was decided the way that it was, and to like what the first-to-invent rule and our attachment to it says about our culture. But it is revolting to have no better reason for a rule of law than that so it was laid down in the time of Henry IV. The reason for the first-to-invent rule of priority has ceased to make sense in our world. The rule should become an honored part of our past, rather than an impediment to our future.

  101. Michael F. Martin,

    “But more importantly, when Edmund Randolph, Thomas Jefferson, and Henry Knox decided the first interference proceeding, Randolph suggested that the patent be granted to the first-to-file. Randolph, of course, was also a key participant at the Convention.”

    Two comments.

    First, the existence of an interference proceeding infers a knowledge and an understanding that the grant of patent was a right awarded to the “first inventor” and not the “first filer.”

    Second, it appears that Randolph’s suggestion was made in the context of an interference proceeding, and I understand that a “first to file” would eliminate the need for such proceedings. If I were involved in an interference proceeding, I too would likely make such suggestion if the goal were to eliminate interference proceedings and make life easy by making a bright-line rule as first-to-file or race to the PTO doors wins.

    But what action did he take? If he didn’t take any action on his suggestion at the time, could it have been that he felt resigned to accept that “Inventor” was understood to mean first to create and that the Congress was powerless under the Patent Clause to adopt his suggestion?

    Please remember that the issue I’ve raised is what power does Congress have under the Constitution to grant an exclusive right to a first filer who was not first to invent? I’ve not raised the issue of what will make life easier to the PTO and the rest of the world.

  102. “The game is a metaphor for the idea for the invention. Bringing down the game is a metaphor for enablingly disclosing the invention in a patent application. And that is how we wound up with our present laws in the US.”

    Why do I suspect that this is true?

    /facepalm

  103. “From where does Congress gets its power to grant a non-inventor (the person who is first to create an application but not first to create that “something”) the exclusive right found in a patent? It’s not in the Patent Clause which speaks to the “Inventor.”

    The zombie argument that will not die.

    [departs to garage to assemble flamethrower]

  104. I recall the discussion of the first to invent in ancient US court decisions referenced the law concerning the hunter pursuing game in the wild. One hunter may begin the pursuit first, and another join the hunt. The two hunters may not be aware of one another. If the first hunter brings down the game, he gets the meat. If the second hunter brings down the game, the first hunter still gets the meat. That was the settled law of the time.

    The game is a metaphor for the idea for the invention. Bringing down the game is a metaphor for enablingly disclosing the invention in a patent application. And that is how we wound up with our present laws in the US.

  105. I’ve never understood why people get so wrapped up in the moral rights and similar fluffy-bunny aspects of patent law. The purpose of the patent system is to promote the progress of the useful arts. Period. If Congress thinks that first-to-file is the best way to do that, that’s their prerogative.

    And on the “inventor” constitutional interpretation thing, I think that first of all the term is not so clearly defined as to preclude independent inventors, and secondly, regardless of how we define “inventor”, Congress has to figure out some way of determining who the priority inventor is. The current system isn’t nearly as accurate as it could be, if we were willing to expend enormous amounts of time and money investigating and prying into people’s lives. Does that mean it’s unconstitutional? As long as the method of determining priority congress picks doesn’t violate due process, I don’t see the basis of the complaint.

  106. “Check out your English common law again. The Statute of Monopolies was interpreted to protect the first to import in Edgeberry v. Stephens, 2 Salk. 447, 1 Abbot’s P.C. (K.B. 1691).”

    Read the law n you’ll find out why.

    “”Provided nevertheless, and be it declared an enacted That any Declaration beforementioned, shall not extend to any Letters Patents and Grants of Privilege for the Term of one and Twenty Years, or under, heretofore made of the sole Working or Making of any Manner of new Manufacture within this Realm, to the first true Inventor or Inventors of such Manufactures which others at the time of the Making of such Letters Patents Grants did not use, so they be not contrary to the Law, nor mischievous to the State, by Raising of the Prices of Commodities at home, or Hurt by Trade, or generally inconvenient.”"

  107. “You heard it here first folks, overtime for examiners limited to 10 hrs.

    Posted by: 6 | Apr 09, 2009 at 05:19 PM”

    Which means that the backlog will increase at a greater rate, despite the recession.

  108. @Jim H.

    Check out your English common law again. The Statute of Monopolies was interpreted to protect the first to import in Edgeberry v. Stephens, 2 Salk. 447, 1 Abbot’s P.C. (K.B. 1691).

  109. “Even if I were to agree with your assumption that there may be more than one inventor, the above historical basis provides the patent be awarded to the “first” and true inventor.”

    On the contrary, that would point to the glaring lack of the word “first” in the constitution and allow for the current interpretation. Even so, the definition of the word simply doesn’t support that view.

  110. “If I invent and you invent, independently, are we not both inventors? Am I not an inventor because I invented later?”

    No, you aren’t. Simple as that, and it is a shame the courts hadn’t adopted this view a long time ago so that the well settled law wouldn’t be as wacky as it is.

    “Black’s law dictionary? Are you seriously suggesting that the Constitution should be interpreted in light of Black’s Law dictionary?”

    Name your dictionary big boy, it’ll say the same thing. How about, let’s say, one from when the constitution was drafted? You’ll find the definition was even more exacting. I saw it in some law review paper.

    “What about the third guy, who invented before both of us?”

    He’s the inventor.

    “Why does he get screwed if he comes in a year after we publish?”

    Because congress enacted 102b and a.

    “Isn’t Congress screwing that third inventor with that law?”

    Yes. Sort of. Isn’t he screwed under our current interpretation as well? Yes.

    “Isn’t that, in your Black’s law interpretation, unconstitutional?”

    I don’t see why it would be.

    “If so, why haven’t you been complaining about it all along.”

    Hmmm, the answer to the previous question being irrelevant, I have been complaining all along.

    “So, I’d buy your argument if you will agree that prior use should always be a defense (in fact, proof of no-prior use should be an element of a patent infringement claim, because otherwise the patentee has derived its rights from something that is not “invention.”"

    Sounds good to me, except the part about the proof of no prior use being required. Congress is within their rights to not require that and give the presumption of validity after examination.

    “On the other side, many, such as Ron Katznelson, who I respect greatly for analyzing the “real” data (not speculating, conjecturing, or simply opinionating on what that data might be) have come up with other contervailing arguments, including potential effects on Davids of Innovation who may be less likely to win the “race to file” in the PTO, and thus be shut out, versus the Goliaths of Industry. In this regard, see Ron’s concerns expressed on Patent Docs blog.”

    Come on though, how long does it take the draft an application if it is really imporant? 2 days max? Crap claims and just chuck everything in the disclosure.

  111. Rob K.

    Under the modifed Senate bill (S. 515) that was passed by the Judiciary Committee, any disclosure that comes from the inventor(s) doesn’t prevent filing (create a novelty bar), at for 12 months thereafter.

  112. Censored GPope,

    I pulled out my IP Law case book. I provide the following comments based on the information provided in the introduction to the Patent Law section:

    Apparently, the first known system for awarding patents for inventions in the useful arts dates to Venice when the Venetian system was codified into a general patent statute in 1474. A 1460 patent was issued to one Jacobs as the “first and true inventor” of a water-raising mechanism.

    The seminal document in the history of English patent law may be found in the Statute of Monopolies, 21 Jac. 1 c. 3 (1624) which allowed for the Crown to grant patents “to the true and first inventor or inventors[.]”

    Even if I were to agree with your assumption that there may be more than one inventor, the above historical basis provides the patent be awarded to the “first” and true inventor.

  113. What we need to keep is the 12-month window wherein you can disclose something but still patent it later if you file within 12 months. It’s not clear to me from this thread whether the proposed reforms would eliminate this window. If so, a lot of good technology originating from universities is going to be rendered unpatentable and probably lost to commercialization. What we really need is to have this 12 month window everywhere in the world. It would greatly simplify things.

  114. @Jim H.

    Unfortunately, it is not at all clear that that was how “inventor” was understood by the Constitutional Convention. Patents were granted to the first to import an invention to England for a long time, and the Founders may have been aware of that when they drafted the clause.

    But more importantly, when Edmund Randolph, Thomas Jefferson, and Henry Knox decided the first interference proceeding, Randolph suggested that the patent be granted to the first-to-file. Randolph, of course, was also a key participant at the Convention.

  115. Mark Man (cleaver patent-related name),

    “I’d buy your argument if you will agree that prior use should always be a defense (in fact, proof of no-prior use should be an element of a patent infringement claim, because otherwise the patentee has derived its rights from something that is not “invention.”"

    I agree. If that something is used prior to the “date of invention” recognized by the patent, then the patentee is not the inventor to whom the grant of patent should be awarded. Prior use should invalidate the patent.

  116. Censored GPope,

    “If I invent and you invent, independently, are we not both inventors? Am I not an inventor because I invented later?”

    Correct. You are not the inventor.

    “What about the third guy, who invented before both of us?”

    Then he is the inventor, and we are not.

    “If not, then you acknowledge that Congress has the authority to fork over the 1st inventor if he waits to file.”

    I disagree with your assumption that there can be a first inventor, second inventor, third inventor, etc….

    There is one inventor, i.e., the one who creates that something first.

  117. It follows that an “inventor” would be the person who has created that something for the first time.

    Interesting theory but that has not been the practice for the last 50 years (at least — I don’t know about older patent law). Specifically, a person/company can be held liable for infringement EVEN IF they can prove they were practicing the invention prior to the patentee. If they were, for example, practicing the invention in secret. So, I’d buy your argument if you will agree that prior use should always be a defense (in fact, proof of no-prior use should be an element of a patent infringement claim, because otherwise the patentee has derived its rights from something that is not “invention.”

  118. Somebody wrote:

    “”"”The Patent Clause states that “Inventors” will be secured the exclusive right [secured by a patent]. In my opinion and given the definition in Black’s Law Dictionary, “invent” means “to create (something) for the first time.”"”"

    That analysis is weak.

    If I invent and you invent, independently, are we not both inventors? Am I not an inventor because I invented later?

    Black’s law dictionary? Are you seriously suggesting that the Constitution should be interpreted in light of Black’s Law dictionary?

    What about the third guy, who invented before both of us?

    Why does he get screwed if he comes in a year after we publish?

    Because, you say, 102(b) says so?

    Well didn’t 102(b) get created by Congress?

    Isn’t Congress screwing that third inventor with that law?

    Isn’t that, in your Black’s law interpretation, unconstitutional?

    If so, why haven’t you been complaining about it all along.

    If not, then you acknowledge that Congress has the authority to fork over the 1st inventor if he waits to file.

    Either way, your weak argument gets armbarred and you, my friend, must tap out.

  119. The Patent Clause states that “Inventors” will be secured the exclusive right [secured by a patent]. In my opinion and given the definition in Black’s Law Dictionary, “invent” means “to create (something) for the first time.” It follows that an “inventor” would be the person who has created that something for the first time. As understood by the framers, inventors, the PTO, the courts, and American society over the past 200 years, the date of that that “something” was created is the date — the date of the invention — which determines the inventor and to whom an exclusive right of patent should be awarded.

    From where does Congress gets its power to grant a non-inventor (the person who is first to create an application but not first to create that “something”) the exclusive right found in a patent? It’s not in the Patent Clause which speaks to the “Inventor.”

  120. The biggest downside to “first-to-invent” is that you need a procedure for determining priority between conflicting claims. That is currently handled by interferences which are governed (as some would say) by an arcane and complex set of rules which may arguably determine the “first-to-invent” and which make the whole procedure extremely expensive (about as costly as a modest or even more than modest patent infringement). My dad, who was an interference expert (about 400 of these “monsters”) said that the problem was that “second-to-file” was determined to be “first-to-invent” at best 20% of the time. That’s a pretty low percentage for what is a very expensive procedure that most Davids of Innovation can’t really afford anyway. Also, with the ROW now “first-to-file” the U.S. with its “first-to-invent” system sticks out like a sore thumb to ROW (not necessarily a good argument for going to “first-to-file”).

    On the other side, many, such as Ron Katznelson, who I respect greatly for analyzing the “real” data (not speculating, conjecturing, or simply opinionating on what that data might be) have come up with other contervailing arguments, including potential effects on Davids of Innovation who may be less likely to win the “race to file” in the PTO, and thus be shut out, versus the Goliaths of Industry. In this regard, see Ron’s concerns expressed on Patent Docs blog.

    I’ll admit I see arguments both ways on this provision, so it isn’t clear-cut to me what the right answer is.

  121. I wonder whether @Eliminate the backlog realizes the irony of his comment given the way that provisional applications are used today.

    Better to get things done right the first time.

  122. I recall that the bill was supposed to become effective one year after its enactment. So there would be some time to prepare/adjust. Is that right?

  123. Actually, a more serious problem may be that in 102(a)(1)(B), the bill refers to “others who obtained the subject matter *disclosed* directly or indirectly from the inventor”

    Shouldn’t this be CLAIMED? Otherwise this is a mess!

  124. Actually, it’s possible to construe the “or” between (h)(1) and (h)(2) as a solution here.

    The effective date is EITHER the filing date of the patent in which the claim appears OR the filing date of an earlier patent application or patent “in which the claimed invention is disclosed” under 112.

    Wouldn’t this permit for different claims in the same application to have different priority dates?

  125. I assume the first to file, if it survives, would go into effect on some future date, and first to file would be the rule till then.

  126. “Thus, the provision would allow an applicant to reach-back to a provisional or parent document to claim an effective date for the entire patent document even if the priority document discloses information directed to only a portion of the claims.”

    Neither the PTO nor the Courts will reach that result.

    However, this exercise is illustrative of how “oh let’s adopt first to file — it makes things simple” makes things complicated.

    Yes, interferences stink. But they occur in 1% of the cases filed. Changing to first to file will cause stink in the other 99%.

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