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?
“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.
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.
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).
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
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.
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.
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.
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.
“”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.
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.
Does anyone relise that spel checker was inveted in the 1970s?
“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
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.
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.
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.
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.
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.
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.
“the Constitution also mentions “inventors”. So presumably non-inventors cannot be granted patents.”
LOLOLOLOL.
So now assignments are unconstitutional?
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.
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.
Snake Fist,
Hold that thought until later today. Time for Easter services.
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.
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.
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)
the Constitution is not an issue IMHO
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.
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.
“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.
“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.
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”.
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.
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.
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.
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.
“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.
I was misremembering with respect to the SoM.
“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.
“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.
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.
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
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.
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.
Lionel,
Did they even have Fiats back then?
Wasn’t it, carts and horses?
But you got it from my fishermen first.
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!
“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.
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.
“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.
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.
You all are going to need a bigger boat…
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.
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.
Uh, Oh. 6 is right! It’s D! Simultaneous invention means it’s obvious, right? So no patent for either of them.
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!
Posted by: Brad Pedersen | Apr 10, 2009 at 09:45 AM
Excellent comment, Brad.
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?”
Or maybe:
E: Divide by 0 and the universe ends.
“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.
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.
Willton,
I don’t think I understand your meaning of “defective” in defective filing.
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?
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?
@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).
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.
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.
May I, may we all, earn our keep.
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.
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.
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?
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.
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?
@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.
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.
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?
“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?
Brad,
Very good points, especially on whether interferences impact the issue of going from FTI to FTF.
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.
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.
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?
“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.
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.