Kappos Blog & First-to-File

Director Kappos has created a new blog that is available via the PTO website. The blog (titled the “Director’s Forum”) looks to be an excellent avenue for the Director to stay in-touch with patent practitioners and patent applicants – both to receive input from the IP community and to serve as a pulpit for PTO proposals. The blog allows comments, although they are moderated.

The first post focuses on how the PTO is attempting to “work for independent inventors.” In one portion, Kappos focuses on legislative patent reform and a move to a first-to-file system:

With regard to the patent-priority system, the bill’s proposal to move to a first inventor to file system really represents only a minimal change to the process we use now. The new system would not create a situation where someone could steal an idea and win a race to the patent office. That person would not be an inventor and would not be eligible for a patent in the first place. Keep in mind that there are stiff penalties in place to protect against that. So the real issue involves the case of simultaneous non-collaborative invention that is currently resolved through the interference system.

The truth is that only .01 percent of all patent applications could be affected by a change to first inventor to file. The interference system is already biased in favor of the first inventor to file and 70 percent of the extremely small number of cases that get into the interference process are decided in favor of the first inventor to file. For more on these and other issues, I would encourage you to read the text of the speech I gave at the Conference on our Web site.

Of course, it is not true that “only 0.01 percent of all patent applications” could be impacted by a change to first-to-file. The problem is that this figure does not take into account the frequency that patent applicants rely on their invention date to avoid prior art by swearing behind a reference. My own studies find that about 1% of applicants attempt to swear-behind prior art. Applicants swear behind more often in applications that might be termed “valuable.” While still small, the 1% frequency is 100 times greater than the PTO’s 0.01% figure (which appears to be based on interference tallies).

The data also ignores the frequency that invention date is relied upon during litigation. My preliminary studies show that invention date is more frequently at issue in infringement litigation than at the PTO.

Notes:

59 thoughts on “Kappos Blog & First-to-File

  1. Rick P, is the fraud special to China or to FtF? If the latter, why is the Fraud of which you warn unknown in Europe? Can you help me with that question?

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  3. First to File Fosters Fraud. It is 4F. In China there is a game of hi-jacking patents. It will take off like a virus in the US if we adopt “first to file.” Without the passion of the “inventor,” win or lose, there will only be left the deception, banked by the soul sellers. (my opinion, people) mop

  4. fish bones — I would like to see a year by year graph for the past twenty or thirty years of the percentage of Patent Bar members with less than three years experience.

    Run get that info for me and post it here, would you?

  5. Regarding director Kappos’ references to the reform bills minimal changes to the process for inventorship determination that we now use, the reality is that the system is in a state of awarding patents into the incorrect name 100% of the time or nearly 100% of the time in instances where valuable patents are at issue. These patents of course are the only ones that are worth filing and the only ones that will result in new products coming onto the market. The fairly tale of simultaneous non-collaborative invention needs to be realized and be the subject of necessary legislation changes in addition to the 30 or 40 other methods that inventors are cheated out of their inventions and that are not dealt with in the present legislation. See out website to see all of the needed changes and why the present proposals are absolutely ludicrous. The fear of losing an invention to the deficiencies of the present and proposed system of inventorship determination represent an extreme detriment to human advancement through innovation and needs to be corrected immediately. Also civil rights violations of inventors must be corrected so they can breathe free as our other citizens do.
    link to inventingconsultantcreator.net

  6. Former, what can I say? Of course an inventor-written app is always a disaster, the more so under FtF. The interesting issue is how many pages of attorney-written app it takes, to safeguard an inventor’s subject matter, and how big the cost of that operation is, to the impecunious inventor. Take a look at what professionally written stuff is filed at the German or UK Patent Offices as priority date defining new apps, for example. Is it all useless crap? I think not. How much did the inventor pay? After you’ve looked, hazard a guess.

  7. Max, you are a good diplomat (I mean this as a sincere compliment) and I usually agree with you, however, the quality of inventor-written applications (including provisionals, but not only those) varies greatly and is often very poor to the point of being non-enabling and/or limiting in scope. The inventor written/filed specs I see very often merely tell what the invention can do, and not what it is. I highly recommend a P.Atty review of such Spec – not to ensure my income, rather to protect (save) the client’s income ! I sincerely feel sorry for those penny wise Euro/$/pound foolish inventors who file poor priority applics thinking that a P.Atty can save them later.

  8. Correction to FishBones, the article cited invention date being relied upon in litigation not “filing date”, and it was to this I directed my comment. If you truly meant “filing date” then I misunderstood your question.

  9. Malcolm wrote, asked, “It makes perfect sense in some respects but I’m really not sure how the massive, necessary involvement of a Federal agency like the PTO fits in with the typical wingnut ideology. Anyone care to explain it?”

    Just a guess, but maybe it fits wingnut ideology because it’s a massive federal agency that’s user-fee supported instead of tax supported?

  10. Fish bones asked, “What are the circumstances (referred to in this article) in litigation when the filing date is relied upon?”

    I assume they meant when the defendant comes up with purported 102(a) or 102(e) art to invalidate certain important claims of the patent, under the current law the patentee can prove invention date prior to those references.

  11. “First to invent is much more fair, though first to file is easier to manage”

    There is always this tension between fairness and ease of management.

    Trial by jury is (we hope) more fair, but a pain to manage. It was more efficient to just have a king decide how a dispute should be resolved.

    On the other hand, Art. 1 sec. 8 says we are interested in “progress” in science and useful arts, not being fair.

  12. Mooney says: “I don’t know much”

    Truer words were never spoken.

    You’ve got it all wrong Mooney. I heard that teabagging is something you do to with your boyfriend – Anderson Cooper.

  13. Nice to see you again, Dr Katznelson and thanks for the link to the Paper on experience in Canada, which I will find time to read.

    Meanwhile, yes I do still maintain that the USA and Europe differ in their attitudes to investment in technical innovation, and entrepreneurship, by more than their respective FTF and FTI patent systems. We both know this really, don’t we? I think that, if Europe had been with FTI, instead of FTF, all these years, it would STILL today lag the USA in entrepreneurial activity, by at least as big a margin as is displayed today with Europe under FTF. Can anybody who knows Europe seriously doubt that proposition? If Europe had been on FTI all along, would the USA today be getting routinely out-entrepreneured by Europe? I find the idea even more incredible than that one day the USA will switch to FTF.

    Our previous dialogue has given me fresh insights. You see those reflected earlier in this thread, with my reluctance to get into debate about small entities. In general, people see what they want to see. I think that goes for you too. Maybe also for me but that’s OK. Readers are intelligent enough to decide for themselves.

  14. It seems to me that sound patent policy should encourage inventors to file as soon as they have possession of the invention. Provisional applications can be used to insure the resulting patent comprehencibly describes the invention. To do otherwise may extend the expiration date of the patent. In other words, if the second filer prevails in an opposition with the first filer, the result may encourage delay in filing if the second filer is willing to chnace intervening third party prior art.

  15. MaxDrei, here we meet again on the FTF topic. I had previously attempted (unsuccessfully) to clear your myopic misconceptions when it came to its potential harm to small startups – a category that is all but extinct as an indigenous force in some European countries.

    You are correct in reciting the teaching and disclosure (and yes, early disclosure) purposes of the patent bargain. However, you apparently misapprehend FTF’s perilous deviations from the patent bargain: You have neglected to address the relevance/quality (or lack thereof) of disclosures resulting from an FTF system and, more importantly, you ignored the disclosures under FTI that would never take place under FTF because of inherent penalties and disincentives it creates for small startups.

    A 2008 survey of about 1,500 U.S. Startups found that they have spent an average of $38,000 to obtain their most recent patent. This is roughly twice as much of expenditures per patent of all other firms and perhaps three to four times the costs to large firms with in-house patent counsel. Startups often pay significantly more than incumbents to their prosecuting attorneys, because startups (i) tend to file for patents on inventions that are more important to the company’s core business model than large firms, (ii) usually use outside instead of in-house counsel for patent prosecution; and (iii) often have difficulty monitoring outside counsel to limit overall costs. See Graham et al, High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, 67 (June 30, 2009). Available at SSRN: link to ssrn.com.

    Combine this stark cost imbalance with the heightened burdens under Section 112, with increased filing frequency requirements, and with resultant lower useful patent yield under FTF, and you have a fine recipe for killing or harming startups. Startups would also be the most vulnerable to the perilous deviations from the patent bargain caused by FTF. It will force applicants to prematurely disclose much more information than that relevant or necessary to ultimately support the required claims, putting startups at much greater competitive disadvantage compared to incumbents. This imbalance in the patent quid pro quo is much less prevalent under the current FTI system, where in due course, we disclose only that which is required to support our ultimate claims – no more and no less.

    Premature triages based on very little available information will result in important inventions held back without selection for disclosure and filing. Worse yet, there would be no teaching or disclosure from startups that do not get funding or do not survive because of higher perceived risks of patent protection loss. While we may not know exactly how patent filing patterns and costs will evolve under FTF, we do have some overall results of such a transition in Canada, when it moved from FTI to FTF in 1989. A recent McGill University study shows that small businesses were put at a disadvantage compared to large firms and that patent quality declined. See Lo & Sutthiphisal, Does it Matter Who Has the Right to Patent: First-to-Invent or First-to-File? Lessons from Canada, NBER Working Papers, No. W14926, 28, (April 2009). Available at SSRN: link to ssrn.com.

    MaxDrei, when you look at the patent bargain, please look at its totality. Your comments indicate that you may not have considered all of the bargain’s facets. Does this mean that your experience in European innovation (of larger firms, perhaps) is dismissed and that there is no innovation and progress under FTF? – Of course not. However, it is the manifest difference in the degree and disruptive nature of innovations that emerge under the American patent system that should be noted. Look at all innovative and disruptive technologies around you today and ask yourself what fraction of these inventions first originated (not merely improved) in the United States. Can you really argue that the differences in our patent systems’ bargain structure are not significant explanatory factors? This is not rocket science and should come as no surprise. Suppressing startups’ strong patents is one of the consequences intended by incumbent large firms pushing for FTF in the U.S. The only surprise is how many Americans can fall for the “harmonization” mantra used to cover up the real agenda of these large firms.

  16. “By the way, I’m always fascinated by the alignment of the interests of teabaggers and wingnuts with software patenting bulls. It makes perfect sense in some respects but I’m really not sure how the massive, necessary involvement of a Federal agency like the PTO fits in with the typical wingnut ideology. Anyone care to explain it?”

    Malcom, try the Constitution. That should help explain things.

  17. “Practitioner’s liability is also easily taken care of with a revised retention letter.”

    Of course a retention letter can address liability. But often, subsequent CIP applications or ongoing client work isn’t always started with a new retention letter.

    The FTF system is simply a further attack on patent rights.

  18. Dennis,

    Is it possible that both your figure and DK’s are correct- or on the extremes of the real number? After all, a FTF system in the US could include a grace period for inventors’ disclosures which must make up a significant chunk of references that are sworn behind.

  19. I’m sorry Mooney, could you explain in detail everything you know about “teabagging?”

    I don’t know much. It’s something that Republicans came up with so the mouth-breathers in their base can pretend that are all revolutionary “freedom fighters” like the famous Boston colonists (no pun intended). Think Michelle Bachmann, Sarah Palin, Dick Cheney, Liz Cheney, Glenn Beck, Rush Limbaugh etc. You know, genuine human scum that exists only to defend corporate interests and lie on TV.

    By the way, I’m always fascinated by the alignment of the interests of teabaggers and wingnuts with software patenting bulls. It makes perfect sense in some respects but I’m really not sure how the massive, necessary involvement of a Federal agency like the PTO fits in with the typical wingnut ideology. Anyone care to explain it?

  20. “Change is not necessarily good. Changing America to “harmonize” with the rest of the socialist world is not the kind of change we need.”

    And I would add that this is especially true given that the “rest of the socialist world” is abandoning socialism and bolstering their patent systems…

    I’m sorry Mooney, could you explain in detail everything you know about “teabagging?” Word has it that you are an authority on the subject of proper administration thereof.

  21. Practitioner’s liability is also easily taken care of with a revised retention letter. In the initial consultation discuss with the client the time frame in which you will prepare the application and the corresponding cost and have a statement in the client retention letter that any filing by the agreed upon deadline will not be considered malpractice even if intervening art or an application is filed prior to filing the client’s application.

  22. I should have thought that

    “the primary concern we should have with making patent law”

    is

    What provisions of patent law will best Promote the Progress of Science and Useful Arts.

    rather than, for example,

    What provisions of patent law will minimise risk to patent attorneys.

    The present discussion in SCOTUS about free flow of information is relevant to promotion of the progress. The legislature could meanwhile usefully reflect on what provisions of patent law will get information flowing freely at the earliest possible date (by which I mean, of course, FTF).

  23. Patent attorney, point well taken. However, the US is not the only country that has a grace period, even those that have a FTF system in place. Canada and Mexico have it because of NAFTA, other countries also have grace periods, especially with regard to ones own disclosure, but with varying degrees of requirements and limitations, e.g., Brazil, Panama, China, Korea, Japan, South Korea, Russia, Malaysia, etc. It is still significantly easier to file before any potentially barring event, but with individual inventors and small companies, often a patent practitioner has to deal with what has been done by the client before he walks in the door.

  24. The new system would not create a situation where someone could steal an idea and win a race to the patent office. That person would not be an inventor and would not be eligible for a patent in the first place. Keep in mind that there are stiff penalties in place to protect against that.

    Could somebody explain what those penalties are?

    I’ve been involved in patent litigation where it’s entirely clear that the patent-holder was not the inventor (the illustrations and much of the text was copied from a book!), but there seemed to be no “penalty” for this at all. The current system seems to be “you might not get away with it, but there’s no cost to that, and you might force the other side to give up”.

  25. …and after all, making things easier to manage is the primary concern we should have with making patent law.

    Like defining “Quality” as reject-reject-reject.

    Like violating the “Boundy Point” (OMB link to patentdocs.org) with power-grabbing rules.

    /sarcasm off

    Well, at least the last two items above have been terminated.

  26. First to file helps companies, not individuals. While I counsel clients to avoid public disclosures before filing, many don’t know the rules ahead of time and without a grace period, they’ve lost everything. First to invent is much more fair, though first to file is easier to manage.

  27. “Practitioner’s Liability”

    Bob,

    Point well-taken. In our “litigation-prone” U.S. that expects everyone to act perfectly, this is an extremely valid concern. You’re also not the first I’ve heard this concern from.

  28. Practitioner’s Liability — In my brief review of the comments, I don’t see anyone talking about the effect a “first-to-file” system will have on practitioner’s liability. Of course, Prosecution counsel will have more liability if the US system moves from the “first to invent” system. In other words, if a patent is successfully invalidated because the inventor fails to file first, timely patent preparation and filing becomes an issue. Ultimately, our malpractice insurance premiums will have to increase to compensate for new liability. Of course, we will pass this cost on to our clients. In the end, increase patent costs and fees will more likely deter independent inventors. In house counsel will not have the same risks.

  29. “And filing a pro, to get a priority date, costs only a few dollars, no?”

    – only if the bulk of the work in getting to the end state of a non-provisional is NOT done. The difference in filing fee is not the bulk of the cost driver. This is a huge difference.

    In some substantial ways, provisional practice would be gutted by FTF.

  30. “The true cost of writing full apps, fit for FTF purpose, is far less than Chicken Little cares to appreciate.”

    MaxDrei, you have not been paying attention to what Ron K has talked about, have you?

  31. NOiP.

    Retroactivity, I agree, would be an issue and my preference would be against applying, as there are certainly small companies that may have relied upon the time to develop their ideas.

  32. EG,

    I am not involved in litigation, so I have a few questions.

    How easy is it to not only prove date of invention, but diligence in reduction to practice and filing? I believe lapses of a week or less between concept and filing have been held to restart the clock. Are these lapses only viewed in the breach? Is it up to an opposing party to prove that there was no diligence in reduction to practice or filing?

    Also, don’t large companies now routinely rack up attorney’s fees for the small business or inventor forcing them to prove invention date?

    I have always thought first to file would benefit small inventors and small business.

  33. This is a good thread because it focusses on the radically different interests of i) the small entity that can’t afford to write a full patent application but needs an issued American patent, and ii) the entity that’s actually a functioning business with product to sell and competitors to beat.

    How to balance the interests of the one relative to the other? I don’t want to stir that wasp’s nest again.

    My 2 cents is this though.

    Applications written in the USA are double the length of stuff written for the FTF world outside the USA. Americans are scathing about “poorly written” foreign-originating specifications, but they’re not poorly written. Rather, they are fit for FTF purpose (whereas American apps, for all their inordinate length, are not). The true cost of writing full apps, fit for FTF purpose, is far less than Chicken Little cares to appreciate.

    And Ned Heller’s right about the provisionals that, whatever it is that they do disclose, are devoid of any statement of the inventive concept or of the disclosure that would enable it. In a FTF system, such a provisional might still get the lone inventor to paradise but, more likely,…not. You see, in FTF, it really does all depend on who was first to the PTO with an enabling disclosure of a stated inventive concept. it is exactly this feature of FTF which squeezes out all those “poorly written” apps.

    Actually, lone inventors (once they have grasped the simple Rules of the Game of getting a priority date) can do a better job than US patent attorneys, at 1) saying what their invention is, and then 2) providing a disclosure of it that enables the PHOSITA. They have less artifice. That helps. And they can do this much more quickly than a corporation. And filing a pro, to get a priority date, costs only a few dollars, no?

  34. Boss12 — I would like to see a year by year graph for the past twenty or thirty years of the percentage of examiners with less than three years experience.

  35. Mike, your provisional has to have full section 112, p. 1 support for anything you claim. Polishing off may add critical support including examples, utility, species for a generic claim or something critical you found out about later. If anything is missing, you do not get the benefit of the provisional filing date. This can raise a whole host of issues, especially if we do not retain a grace period. But if anyone files or discloses anything in the provsional prior to the filing date of the non provisional, your provisional’s filing date would be of no use to you, while today one can at least show prior invention of the subject matter of the reference.

    The mere thought that you can “top off” the provisional when filing the non provisional is going to get a lot of Americans into trouble. What this means is that Americans will have to file fully supported applications on day 1. This really really hurts the small guy big time.

    The little guy today cannot afford to file abroad so the more stringent requirement for foreign filing are largely irrelevant to him anyway. The statistics about interferences are misleading as well. The little guy can’t afford them and when the opportunity presents itself to invoke an interference, he instead proves prior invention of claims which are not the same as in the claims in the big guys patent.

    The bottom line, the big guy is not affected by first to file. He is happy under both first to file and first to invent. But what he is unhappy with is the little guy getting patents at all. So they want to make it as expensive as possible so minimize the threat they see in the individual or small company inventor.

    So why not lie through your teeth to the little guy and to Congress with arguments that are really red herrings at best. They are so so good at pulling the wool over our eyes while giving us the shiv.

    Look on IBM’s site. They not only strongly favor FTF, the also favor oppositions. Oppositions are another way to crush the little guy at the starting gate. In 1942, when last Congress seriously looked at oppositions, they decided not to do it because of the costs it would impose on the small inventor. They even thought of appointing an attorney to represent the small guy if one were invoked. But the mere thought of this killed the whole idea.

    But today we hear a lot about bad patents and trolls, but give no thought of the real designs of those with big pockets. Anyone who has ever litigated against IBM knows that they will crush you under enormous financial burdens just to keep up with them. They intend it that way. Might makes right.

    While we still have some breath in our bodies and some freedom to file and obtain patents, we in the patent bar have to stand up against what is happening here.

    Start telling the truth, IBM.

  36. Director Kappos’ move to establish an open dialog with the patent user community should be applauded. It is a breath of fresh air from Alexandria and I hope to see substantive responses from the PTO and not merely a one-way chain of public comments.

    EG makes a lot of good points. The term Firs-To-File (FTF) is often used but it masks the real harm of Section 102 rewrite. It is not about priority contests among applicants. Changing Section 102(g) to provide that patents are awarded to the fist to file in applicants’ priority contest at the PTO would be a rather benign change. The problem is that the legislation rewrites Section 102 in its entirety, redefines the prior art by using the filing date as a basis for priority and emasculates the grace period. Kappos’ interference statistics are irrelevant facts and their use to argue for Section 102 rewrite is either an indication of a profound misunderstanding of the adverse effects of transitioning to a filing-date-based system or merely an attempt to obfuscate the real agenda, catering to large multinational corporations, who will be the beneficiaries at the expense of small firms.

    Dennis, your point on Rule 131 submissions being 100 times more frequent than interferences only begins to make the point. It clearly shows that applicant contests are dwarfed by other more relevant factors. However, like Kappos’ focus on interferences, it misses the major point because it focuses only on what the PTO receives and ignores pre-filing activities that are invisible to the PTO. The major stakes and harms to small firms are not solely related to the quality, content or the submission speed of an application that ultimately reaches the PTO. Rather, the harmful effects of FTF is in losing patent protection on inventions for which applications will not, or could not, be filed. Harm to small firms will not merely arise due to the “race to the patent office”. Harm will be inflicted due to the race to the patent office with the wrong application, for the wrong invention, and for the wrong reasons, while exhausting precious resources in the process. Unlike large firms who have in-house application drafters and prosecutors, small firms cannot afford to increase filing frequency. I explain this more fully with reference to some statistical patent application data in a series of blog posts at link to ipwatchdog.com.

  37. 6:

    Lol. Fair enough. I guess my question still stands though in that I don’t really see MUCH of a difference between the two beyond pushing slightly more carefully drafted Provisional applications? Obviously it would increase cost, but a lot of language from provisionals can be salvaged in the corresponding non-provisionals, so it does not seem that it would DRASTICALLY increase cost?

  38. Posted by: Mike | Nov 10, 2009 at 03:50 PM “True, but if you got the real meat of the application in a provisional, then you could satisfy first to file and then file the non-provisional a little later, right? Hopefully the provisional would be fleshed out enough that you’d prevent others from getting there before you. It doesn’t really seem that different from what’s already done?”

    WRONG! WRONG1 WRONG1 WRONG1 AND DOUBLE WRONG1

    And this is exactly the problem.

  39. The internal blog’s moderation seemed to be pretty transparent, if there was any actual moderation. It’s not anonymous, so maybe none was needed, but the discussion did get a little heated at times.

    Given the positive response from the internal blog, I’m glad to see it go public, I just hope it doesn’t get inundated by FUD and flames, or that the moderation can handle it.

    As for the FTF change, maybe I’m just nostalgic, but I see the US recognizing that people don’t usually invent, draft, and file all in the same day as a good thing. Maybe the current interference system can be changed, but just throwing away all the evidence showing invention-prior-to-filing seems like a step in the wrong direction. What are the stats showing $$ and time needed for an interference? Is it worth is? Is it really a tax on the PTO/BPAI? Or is the PTO just getting lonely?

  40. Changing America to “harmonize” with the rest of the socialist world is not the kind of change we need.

    Welcome, patent teabaggers!!!

  41. DC, you are on target. Director K sounds a tad bit cavalier about the proposed “first-to-file” overhaul.

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors [who are the more sophisticated filers but not necessarily the more sophisticated inventors] the exclusive Right to their respective Writings and Discoveries;”

    Done – wow, that was easy. never mind.

  42. This is a great, and frankly nicely surprising, idea … as long as the “moderator/s” (who most assuredly won’t be Mr. Kappos) don’t take it upon themselves to block comments contrary to the positions and viewpoints of the office.

    If they maintain such intellectual honesty; given the widely divergent opinions on so many issues among and between both patent professionals and the public; they’re going to be in for one wild ride.

    Congrats on this bold move, Mr. Kappos.

  43. My view on this debate will be from the standpoint of a prosecuting patent attorney who has been in this business for over 32 years, has been both in large corporate and small private practice, and with the experience of a dad who probably sent me and my brothers through school based on his significant patent interference practice.

    1. First to invent (FTI) versus first to file (FTF) is no longer a patent interference issue, but really a “will there be a grace period” issue. When my dad was in active practice, there were far more interferences than there are now. In fact, my dad was well aware of the poor odds for the second-to-file being determined to be the FTI, as well as the fact that the individual or small business couldn’t afford the expense of a contested interference. A number of these interferences were also simply “ownership disputes” in the disguise of priority contests, or involved “derivation” (i.e., invention stealing) situations. The thought that FTI allows an individual/small business who is tardy to file a chance to win a contested interference (more like someone winning a state lottery) is simply a “red herring” on this issue.

    2. I’ll also admit a certain amount of ambivalence on how I view FTI versus FTF based on my career experience. How you view FTI versus FTF will also depend on whether your business relies primarily on the U.S. market, or on the global market. When I was in large corporate practice (approximately the first half of my career), we truly lived in an FTF world because we competed not just in the U.S., but globally. (Our competitors were also global which meant that most of those competitors were already living with a FTF environment.) That meant dealing effectively with “absolute novelty” countries/regions like Europe in terms of prompt filings before potentially “self-inflicted wounds” due to early market test exposures of technology. This situation was even more challenging (and expensive) before the days of U.S. provisionals. In the large global corporate world, treating the situation as a “virtual” FTF was simply the cost of doing business. Accordingly, going to an FTF world in the U.S. was just recognizing the reality of the large global corporate world.

    3. Now that I’ve been in private practice for over 10 years, my views on this FTI versus FTF debate have undergone adjustment. The individual, and more importantly, the small business (or a non-profit R&D organization like a university), is at a significant disadvantage in a FTF world. This goes beyond being “ignorant” of the “no grace period” issue outside the U.S. The true “killer” here is the stringent “written description”/”enablement” requirements of the U.S. (the rest of the world, including Europe, is getting tougher on their versions of these requirements). The fact is creating a patent application, even if it’s only a provisional, requires the small business to invest time to meet these requirements, as well as to make sure that the claim set correctly covers the technology of greatest interest. Time spent by the small business in terms of internal resources devoted to application drafting is money spent by the small business, beyond just the attorney/government fee costs. Also, the idea that the patent attorney can draft such a patent application in a “vacuum” without the expenditure of internal time resources by the small business usually results, in my experience, in an inferior patent application (believe, I’ve been there when I was in corporate practice).

    4. Coupling FTF with stringent “written description”/”enablement” requirements creates a fairly “lethal” combination for the small business. (In my opinion, Congress talks way too much about individuals being screwed by FTF and not enough about the imposition on R&D-intensive small business which is where most of the significant innovation comes from.) They simply don’t have the time (or money) resources needed to do extensive patent filings that meet stringent “written description”/”enablement” requirements in the relatively short periods of time that FTF realities impose. (We found this issue to be daunting even in the large global corporate world.) Put differently, FTF creates an environment of “hurried application drafting” before enough time (or experimentation) can normally be spent to understand the true scope of the technology. (It also creates more poorly drafted applications for the respective patent offices to consider.) While large businesses can endure such inefficiencies and costs, small businesses normally cannot.

    5. Net: if you live in the large global business world, FTF is the reality you’re willing to accept. But if you’re a primarily a U.S.-based small business that relies upon patent IP to survive, you would much prefer to have an FTI (“grace period”) world, even if it’s only in the U.S.

    My 2 cents for what it’s worth.

  44. If the first applicants to file generally prevail anyway, shouldn’t the present system remain to facilitate the 30% that didn’t file first, yet prevailed? And what about Dennis’ point regarding the rough 1% figure of applicants who swear behind references?

    That is what is so great about our first to invent system. It gets to the truth – it values substance over form.

    Change is not necessarily good. Changing America to “harmonize” with the rest of the socialist world is not the kind of change we need.

  45. The data also ignore the ability of an R&D operation to manage its backlog of disclosures — i.e., moving some ahead of others, while relying on invention date to cut down on the risk of delay for the others.

  46. Boss12 reiterates the same falsehoods. I am doing a better job than 10 years ago, yet my allowance rate is 1/2 what it was a decade ago, and the backlog is longer.

    But, in Dudas-like-fashion, Boss12 blames me.

  47. fish bones said: “A race to the patent office will mean poorly drafted applications being filed.”

    LOL. Don’t you mean EVEN MORE poorly drafted?

    The quality of the descriptions of inventions and claims being written into patent applications by the Patent Bar is at an all-time low, which is one of the main reasons for the backlog at the PTO.

    Another reason: the quality of the prosecution performed by the Patent Bar.

  48. True, but if you got the real meat of the application in a provisional, then you could satisfy first to file and then file the non-provisional a little later, right? Hopefully the provisional would be fleshed out enough that you’d prevent others from getting there before you. It doesn’t really seem that different from what’s already done?

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