The Relevance of Invention Date in Patent Prosecution: Part IV (Survey)

This is Part IV of my series on the relevance of the invention date in patent prosecution. You may download my entire paper here.This part discusses the results of a survey on the impact of a switch to a "first-to-file" system.

* * * *

In the summer of 2009, I conducted an electronic survey of 1141 responders—mainly self-identified U.S. patent law professionals. These individuals primarily self-identified as U.S. patent attorneys and agents and patent litigators. The purpose of the survey was to elicit practitioner estimates of the reliance upon invention-date-based novelty rights during patent prosecution. In creating the survey, I sought to obtain both quantitative and qualitative results. Thus, the survey asked applicants to select objective responses from a list of choices and provided an opportunity for applicants to more fully explain their answers.

The majority of these responders (83%) indicated that they have “participated in the filing of a Rule 131 affidavit.” Those who have participated in the filing of a Rule 131 affidavit estimate that, on average, 3.1% of the cases they have worked with involve a Rule 131 affidavit. Responders who have not participated in the filing of a Rule 131 affidavit estimate that, on average, 0.9% of the cases they have worked with involve a Rule 131 affidavit. Practitioners who work in the areas of Chemistry, Pharmaceuticals, and Biotechnology report a significantly greater average estimated percent of cases that they have worked with that include Rule 131 affidavits as compared with practitioners working in the areas of Electrical Engineering, Telecommunications, and Software.

Switch to First to File: The survey asked responders whether they support a move to a first-to-file system. A small majority of the U.S. attorney and patent agent responders (55%) indicated that they did not support such a move. The responders were given space to provide short written statements regarding their preference for or against a move to first-to-file. The statements largely track the historic first-to-file debate and create a richer data set susceptible to qualitative analysis and categorization according to a set of iteratively created themes that emerged from the statements for each statement received.  The themes in each statement are identified and tallied in Table 10.

pic-89.jpg

50 thoughts on “The Relevance of Invention Date in Patent Prosecution: Part IV (Survey)

  1. Preference Maintains Status Quo”, 6.3%
    re-quoted by IANAE.

    v.

    reconsider your assumption that you can learn what US practioners really think from the commment section
    by Cranky.

    My money’s on Cranky in this one.

  2. “When they finally convert the U.S. patent system to a first-to-file system (and they will)”

    They haven’t done it yet after decades of trying, why start now?

    It’s really foreign interests and chronic corporate infringers that seem to be behind the push. So when you see who the representatives are that are sponsoring this stuff, remember that. Heck, even the unions don’t like all this “reform” talk.

    Strange bedfellows indeed.

  3. I’m wondering whether any of your respondents urged keeping the law as it is because, the way it is, it’s very complicated.

    “Preference Maintains Status Quo”, 6.3%

  4. Dennis, your survey results blow out of the water my pet theory why so many are against patent reform.

    Perhaps you’ll also reconsider your assumption that you can learn what US practioners really think from the commment section of this board?

  5. Does nobody in the USA like patent law the way it is now, precisely because it is so uniquely abstruse and complex?

    No. Lots of people like patent law the way it is now in the USA precisely because it is so uniquely “abstruse and complex”. Some even say that the way it is now gives the US patent an advantage and makes that patent stronger than other patents in the world. Some think that making the stronger US patent the same as other patents would make the stronger US patent better, but have yet come up with an explanation why this would be so.

    Maxie,

    Are you going to answer Ned’s question? Are you going to answer mine? If not, that’s OK, just let me know.

  6. Dennis, your survey results blow out of the water my pet theory why so many are against patent reform. I’m wondering whether any of your respondents urged keeping the law as it is because, the way it is, it’s very complicated.

    I had always thought that a battle on a wide open, billiard-table-flat plain is one thing, but assymmetric warfare, fought house to house, cellar to cellar, street to street, gives a huge advantage to the one fighting on home ground, and gives the invader a real hard time.

    Does nobody in the USA like patent law the way it is now, precisely because it is so uniquely abstruse and complex?

    Or are they just not saying?

  7. When will people just stop trying to think for themselves and listen to IANAE?

    You’re halfway there already.

  8. Yeah, like IANAE says:

    Big clients (the ones with most of the really valuable inventions that would create the most liability if lost)

    This country really needs to put those small inventors in their place. How dare they want to play the king’s game. What do they think this is, America? Next thing you know, someone will even think that design patents are real patents.

    When will people just stop trying to think for themselves and listen to IANAE?

  9. consider that in our litigous society, the pressure will be on the practitioner to hurriedly prepare and file all patent applications, lest they be sued by their client in cases wherein any interference arises.

    That pressure is already on the practitioner. Big clients (the ones with most of the really valuable inventions that would create the most liability if lost) already need to be first to file, and already want the agent spending as little billable time on the case as possible.

    Small clients are even more cost-conscious. The only difference is that the filing would be rushed in addition to the drafting, but that’s no big deal unless you do something ridiculous like leave off the first page of the spec and lose your filing date. What are the odds of that ever happening?

    Hope you’re enjoying your retirement. That’s probably a happy place to be regardless of the current state of our practice.

  10. When they finally convert the U.S. patent system to a first-to-file system (and they will), consider that in our litigous society, the pressure will be on the practitioner to hurriedly prepare and file all patent applications, lest they be sued by their client in cases wherein any interference arises. Yes, the number of interferences is small, but who knows when one might arise. Patent quality will suffer. The first-to-invent system puts the burden on the inventor, where it belongs, not on the practitioner. I am happy to be retired and out of this mess!

  11. Ned: American and foreign inventors have the same rights in the US and outside the US.

    Ned: The question should be whether FTI offers advantages vs. FTF to inventors regardless of their origin.

    I agree. Now, maybe you can explain the following criticisms you made of the switch to FTF:

    Ned: “Still, what is being advocated by the international community is to pull the rug out from under US inventors”

    Ned: “so that they can control the international markets in the patented invention without having to deal with the American.”

    Ned: “How is this an advantage to America?”

  12. Posted by: IANAE | Mar 26, 2010 at 03:10 PM

    “Perhaps unsurprisingly, I note that none of the survey respondents felt either FTF or FTI gave American inventors an advantage over foreign inventors.

    Back to you, Ned.”

    Today that clearly is true given that proofs of prior invention can be made by inventors from any WTO or NAFTA country.

    But, what does this prove, exactly? American and foreign inventors have the same rights in the US and outside the US.

    The statement proves nothing.

    The question should be whether FTI offers advantages vs. FTF to inventors regardless of their origin. Ask the right question and one gets the right answer.

  13. IANAE,

    You can disagree, but you would be wrong.

    listening” does not entail actually doing what is being listened to.

    Of course, you know this, because you, like I, do listen to others. We just branch off in different directions on what we do next.

  14. Listening to others, on the other hand, is among the worst things I do.

    I disagree. Listening to others is not a thing you do.

  15. I said “doing nothing is the best thing I do

    Listening to others, on the other hand, is among the worst things I do.

  16. “Doing nothing is the best thing I do.”

    Your sensei says, please vigorously practice doing nothing with your “Post” button.

  17. “Besides, a journey of a thousand miles begins with a single step. Don’t reject progress because it comes too slowly.”

    And a journey of a thousand feet straight down to your death begins with a single step off the cliff.

    Sometimes, and more often than most realize, doing nothing is the best thing to do.

  18. “continually update the disclosure with further filings ”

    …a favorite tactic of the savvy foreign filer using a mechanism I will not divulge.

  19. “You lost me about halfway down your slippery slope.”

    Not a terribly difficult thing to do with INANE…

  20. I agree the smart US filer should file PCT first in order to cut off later filers worldwide even if he intends only to pursue a US patent.

    Yes! – this leads right to my favorite idea: Give me the Quo. The only way not to hand over the quo and be at the mercy of the system is to file only in the U.S.

    if harmonization is really our goal, shouldn’t we be pushing for a treaty whereby the entire world had in common…

    …one world government with one world constitution?

  21. I would bet foreign patent system would like to eliminate proving inventorship after issue because invention starts here with me and everything they claim to have invented was first invented by my self. the fairest inventorship method I have concieved is probably the lockered live invention uspto televised The four method republican Mccain plan is probably second best of course also invented by myself.

  22. Perhaps unsurprisingly, I note that none of the survey respondents felt either FTF or FTI gave American inventors an advantage over foreign inventors.

    Back to you, Ned.

  23. but it still remains that a US application filed after the European’s PCT could still prevail in the US on the basis of prior invention.

    And yet, it still remains that none of that has anything to do with advantage or disadvantage “to America”. It has everything to do with the rest of the world having a system and the US having a different, awkward, nonstandard, antiquated system.

    You have yet to substantiate your position that FTI is good for “Americans” or “US inventors”, rather than for “people of any nationality who get to the PTO second”, other than by making the tenuous assumption that old law is current law.

  24. There was a kite before electricity.
    There was a rocket, before the moon.
    There was a MAMA, before there was a baby.
    There was a horse, and a zebra, before the zorse.
    Or even a donkey and a horse before the mule.

    Could we do the mule first? NO!
    How about the baby first? NO!
    Let see the Electricty? I doubt it!
    How about bringing the moon down here so the rocket can take a ride to the moon? NO… I don’t think so.

  25. No doubt big European drug and chemical companies fear their US competitors more than Joe inventor; but it still remains that a US application filed after the European’s PCT could still prevail in the US on the basis of prior invention.

    I do not fully understand you second point. How can the USPTO cite an earlier-filed PCT after issue?

  26. But, if harmonization is really our goal, shouldn’t we be pushing for a treaty whereby the entire world had in common [etc.]

    Of course we should. Except that treaties are harder because they need more people to agree than just Congress, and the US is still so far from ROW consensus in some respects (e.g. first-to-file) that those changes need to be made first.

    Besides, a journey of a thousand miles begins with a single step. Don’t reject progress because it comes too slowly.

    Now, if you want to discuss the particularities of the proposed US implementation of first-to-file, that’s probably a much more fruitful discussion. It seems like a pretty defective, almost cargo-cultish adoption of first-to-file, and if you’re really looking to scare people with worst-case scenarios that’s a better place for you to start than “harmonization is evil, and the portions are so small”.

  27. IANAE, I asked you to assume no amendment to Section 104. Obviously today, the foreigner can himself prove prior invention, which does lessen their problems with America, but which does not eliminate it.

    On the flip side, I agree the smart US filer should file PCT first in order to cut off later filers worldwide even if he intends only to pursue a US patent.

    But, if harmonization is really our goal, shouldn’t we be pushing for a treaty whereby the entire world had in common

    1) one prior art;

    2) one standard for novelty and obviousness;

    3) one standard for patentable subject matter;

    4) one standard for “duty of disclosure”;

    5) one standard for claim construction during original ex parte prosecution;

    6) one standard for claim construction for post-grant procedures, including for courts and revocation proceedings;

    7) one standard for sufficiency of disclosure; and

    8) one international court that has jurisdiction for appeals involving questions of law related to the treaty?

    Talk of harmonization by simply going to first to file is a joke.

  28. Ned, I wonder if you are over-estimating the amount of fear and trembling in ROW, as to the threat in the USA from a later filer.

    ROW companies fear US filers, sure. But the US filer they fear is their competitor. And what they fear is that the US competitor files first, with an enabling disclosure of overlapping subject matter, with commercial potential. What they do not fear is a Johnny-come-lately private inventor on a fantasy trip.

    At least, that is my perception, based on routine monthly monitoring of the world’s output of WO and A publications, for a client of mine in his specific technical field.

    What bothers me about the US system is the second filer getting through to issue before the USPTO gets round to citing the earlier filing as a novelty destroyer.

  29. Thus the effort by the international community to eliminate the ability to prove prior invention — so that the international filer can obtain worldwide protection and not have to deal with the American.

    What prevents the American from being the first international filer? I mean, other than the false complacency that he gets from living in the world’s last lingering first-to-invent jurisdiction?

    For that matter, what prevents the international filer (who I assume is some dirty foreigner) from proving prior invention?

    I guess my question is why you’re making this about American people vs. scheming foreigners who are out to get them, when it’s really about the American territory.

  30. IANAE, assume for the moment, no 1994 amendment to Section 104. Outside the US, the first filer (assume here, PCT) obtains the patent everywhere in the world against a second filer — except in the US, where the second filer can still obtain a patent by proving prior invention.

    Thus the effort by the international community to eliminate the ability to prove prior invention — so that the international filer can obtain worldwide protection and not have to deal with the American.

  31. Now, to the fair observer, it is quite apparent that people outside the US are mimicking US first to invent behavior as best they can without the ability to prove prior invention dates.

    They’re using their first-to-file system to mimic a first-to-invent system by making sure they file everything as early as possible?

    Are you sure there isn’t a simpler explanation? Like maybe they’re using their first-to-file system as a first-to-file system by trying to be the first to file?

  32. Another thing that concerns me is statement by our foreign contributors and others that it is routine practice to file early in order to establish at least a prior art date vs. other patents, and to continually update the disclosure with further filings with additional materials and disclosure until one has enough to support a valid patent.

    Now, to the fair observer, it is quite apparent that people outside the US are mimicking US first to invent behavior as best they can without the ability to prove prior invention dates. All of this would be entirely unnecessary if they were simply abandoned their first-to-file systems in favor of first-to-invent.

    But it does put a lie to the aphorism that first to file is a superior system. It clearly is not.

  33. Still, what is being advocated by the international community is to pull the rug out from under US inventors so that they can control the international markets in the patented invention without having to deal with the American.

    They mean to “pull the rug out from under US inventors” by making US inventors (by which you mean “people who file in the US”, right?) use the same basis for priority as everyone else? So they can “control the international markets” by not changing any of the law in those international markets? And all this despite the fact that so many Americans want international protection anyway, and as a result need to be first-to-file regardless?

    You lost me about halfway down your slippery slope. Please elaborate.

  34. Ping, historically harmonization makes a lot of sense to non US and US international companies who wanted to assure that an American could not, by proof of prior invention, obtain a patent in the US while they, they obtained patents everywhere else.

    But, Section 104 was amended in 1994 to allow essentially everyone to prove prior invention dates regardless of country. While this does not entirely eliminate the problem of the rogue American patent, it lessens it.

    Still, what is being advocated by the international community is to pull the rug out from under US inventors so that they can control the international markets in the patented invention without having to deal with the American.

    How is this an advantage to America?

  35. “Discord is a better word to describe the present status.”

    If you mean the discord between those who want to take the teeth out of patent law and those who make their bread by coming up with cool new stuff, then yes there is discord.

  36. Make things as simple as possible, but not simpler.

    ~Mark Twain

    “Harmony” involves different singers singing different notes that, when taken together form pleasant overtones.

    “Unison” is when everyone sings the same note.

    Seems to me we already have “harmony.”

  37. Reminds me of IANAE’s US rights are made stronger by being made the same.

    Funny that you’re reminded of that. Maybe you could remind me of that by linking to the post where you think I said that.

  38. Responders who have not participated in the filing of a Rule 131 affidavit estimate that, on average, 0.9% of the cases they have worked with involve a Rule 131 affidavit.

    How does this 0.9% of those who have not been involved (but have been involved), compare to the study’s error rate?

    Ned,

    I bet you love that 30.8% international harmony figure. Reminds me of IANAE’s US rights are made stronger by being made the same.

Comments are closed.