Comparison of the Current U.S. First-to-Invent System with the First-Inventor-To-File System Proposed in the Patent Reform Act of 2011 (S.23)

Guest Post By Prof. Ann McCrackin, Stephen Brodsky, and Amrita Chiluwal. Prof. McCrackin is Director of the Patent Prosecution Program at the Univ. of New Hampshire School of Law (formerly Franklin Pierce Law Center). Mr. Brodsky and Ms. Chiluwal are both 2011 JD Candidates at the Univ. of New Hampshire School of Law.

The Patent Reform Act of 2011 ("S.23") is now being considered by the full U.S. Senate. One of the provisions of S.23 would replace the current first-to-invent ("FTI") system with a first-inventor-to-file ("FITF") system. Some of the differences between these two systems are outlined below in order to help understand the changes in Sec. 2 of the S.23 Bill. For simplified illustrative purposes, Parties ("A" and "B") and their invention ("Widget") will be used below.

First-to-Invent

The current U.S. system is a first-to-invent ("FTI") system. Under the FTI system, the first party to invent is entitled a patent on that invention upon filing for a patent application (as long as all of the other patentability requirements are met). Even if the first party to invent is not the first to file, that party could still be entitled to the patent rights. In situations where there are multiple inventors of the same invention, the determination as to who is entitled to the patent rights is made during an interference proceeding. Interference proceedings are administrative proceedings held at the USPTO that legally determine the first inventor. However, there are time constraints on interference proceedings, e.g., typically a party cannot bring an interference proceeding on an invention after a patent has issued on that patent. Therefore, the first person to file would get the patent unless another person is able to prove prior invention in an interference proceeding.

The following examples involve two parties who claim the same invention in an FTI system:

FTI Example 1: A invents a Widget. B also invents a Widget independent of and after A. B files a patent application for this Widget. If A later files a patent application for the Widget, A would have the right to the Widget patent as long as A can prove that he/she invented the Widget before B during an interference proceeding. It does not matter that B filed first or that B invented the Widget independently of A.

FTI Example 2: A invents a Widget. B finds out about A's Widget and files a patent application for this Widget. If A later files a patent application for the Widget, A would have the right to the Widget patent as long as A can prove that he/she invented the Widget before B during an interference proceeding. It does not matter that B filed first.

Thus, in the FTI system, the first party to invent is entitled to the patent rights. In both of the FTI Examples the first party to invent is A, therefore, A gets the patent rights.

First-Inventor-to-File

The S.23 bill would replace the current FTI system with a first-inventor-to-file ("FITF") system. Under the FITF system, the first party to file a patent application on their invention will be entitled to a patent regardless of the actual date of invention (as long as all of the other patentability requirements are met). This is essentially a race system – the first to get to the patent office and file gets the patent rights.

However, unlike most other countries in the world with a first-to-file system, the FITF system proposed in the S.23 bill has an exception for the situation where the first party to file "derived" the invention from the second party to file. If the first party to file "derived" their invention from the second party, then the second party may bring a derivation proceeding. During the derivation proceeding, the USPTO will determine whether the first party derived its invention from the second party. If it is determined that the first party actually derived its invention from the second party (the true inventor), then the second party will be entitled to the patent rights of that invention. Thus, the second party may nonetheless obtain a patent on the invention despite the first party's earlier filing date. Although the term "derived" is not defined in S.23, it is clear that the derivation proceedings will replace interference proceedings if S.23 is passed (S.23 replaces the current section 135 of 35 USC on interferences with a new section 135 on derivation proceedings). Therefore, under the FITF system, the first party to file would be entitled to a patent for their invention unless the invention was derived from another party.

The following examples involve two parties who claim the same invention in an FITF system:

FITF Example 1: A invents a Widget. B also invents a Widget independent of and after A. B files a patent application for this Widget. B would have the right to the Widget patent, because B filed a Widget patent application first. It does not matter that B came up with the Widget idea after A as long as B did not derive his/her idea from A.

FITF Example 2: A invents a Widget. B finds out about A's Widget and files a patent application for that Widget. If A later files a patent application for the Widget, A would have the right to the Widget patent as long as he/she can prove that B derived his/her Widget from A's Widget in a derivation proceeding. It does not matter that B filed first.

Thus, in the FITF system, the first party to file is entitled to the patent rights unless the invention was derived from the other party. In the FITF Examples the first party to file is B. B is entitled to the patent rights in Example 1; however, because of the exception for derived patents in S.23, B is not entitled to the patent rights in Example 2. Rather, A gets the patent rights in Example 2.

Comparison of FTI and FITF Examples

By comparing the FTI Example 1 and FITF Example 1 described above, one can see the difference between the two systems when two parties independently invent and file patent applications claiming the same invention. Under an FTI system, A is entitled to the patent rights because A invented first; however, under an FITF system B is entitled to the patent rights because B filed his/her invention first. The FTI and FITF scenarios for Example 1 are illustrated below:

030211_1917_Comparisono1

By comparing the FTI Example 2 and the FITF Example 2, one can see the exception in S.23 for the situation where the first party to file is not actually an inventor, but instead "derived" the invention from the second party to file. Because B derived the invention from A in Example 2, B is not entitled to the patent rights in the FITF system even though B filed first. As a result, A is entitled to the patent rights for Example 2 in both an FTI and an FITF system. The FTI and FITF scenarios for Example 2 are also illustrated below:

030211_1917_Comparisono2

Current 35 USC 102(a) Compared to S.23 with Respect to Removing Prior Art References Based on Date of Invention

Under the current 35 USC 102(a), if the invention to be patented is "known or used" by anyone other than the applicant, or described in "any" printed publication before the date of the invention the applicant is not given patent rights. However, under the current 37 CFR 1.131, an applicant can swear behind 102(a) prior art to show that the applicant's date of invention was before the existence of the prior art and disqualify or remove the prior art reference. Thus the focus of the current §102(a) is on the date the applicant invented the subject matter.

102(a) Example 1 (Current Law): A invents a Widget on January 1, 2000. B also independently invents the Widget on March 1, 2000 and publishes an article describing his Widget on March 2, 2000. A files a patent application on the Widget on January 1, 2001. Under the current law, A may swear behind B's article to establish A's earlier date of invention. Because A's date of invention is prior to the date of the published article, A can obtain the patent rights.

In contrast, the proposed S.23 does not have provisions equivalent to the current §102(a) because the date that A invented the subject matter no longer matters. Prior art is considered relative to the filing date of A's patent application. Thus, under the proposed S.23 an inventor is not afforded an opportunity to overcome a prior art reference by establishing an earlier invention date.

102(a) Example 1 (S.23): A invents a Widget on January 1, 2000. B also independently invents the Widget on March 1, 2000 and publishes an article describing his Widget on March 2, 2000. A files a patent application on the Widget on January 1, 2001. Under the proposed S.23, A cannot swear behind B's article to establish A's earlier date of invention because B disclosed the Widget prior to A's filing date for the patent application. Even though A has an earlier date of invention, A cannot overcome the article as a prior art reference and cannot obtain the patent rights.

Thus, in the FITF system under the proposed S.23, an applicant cannot swear behind a prior art reference when the applicant has an earlier date of invention. In the 102(a) examples, A can get the patent under the current law because A can swear behind the reference; however, A cannot get the patent under the proposed S.23. The 102(a) Example 1 Scenarios are illustrated below:

030211_1917_Comparisono3

Current 35 USC 102(b) Compared to S.23 with Respect to One-Year Grace Period For Filing Following a Disclosure

The current 35 USC 102(b) provides an applicant with a grace period for filing a patent application regardless of disclosures made by the applicant or others during the one-year period prior to filing the patent application. Thus the focus of the current §102(b) is on the date the applicant filed a patent application rather than the date of the applicant's invention. For example, currently under §102 (b), if an invention is disclosed in "any" printed publication by the applicant or others, less than one year before the filing date of a patent application for the invention, the applicant may still obtain a patent. Similarly, if the invention has been in "public use" or "on sale" less than one year before the filing date, the applicant may still obtain a patent.

102(b) Example 1 (Current Law—prior disclosure by inventor): A invents a Widget on January 1, 2000. A publishes an article describing the Widget in a journal on March 1, 2000. A files a patent application on the Widget on January 1, 2001. Under the current law, A is not barred from getting the patent because there is a grace period for disclosures made within one year of the filing date of the patent application.

102(b) Example 2 (Current Law—prior disclosure by others obtained directly or indirectly from inventor): A invents a Widget on January 1, 2000. B learns about the Widget from A and publishes a journal article describing the Widget on April 1, 2000. A files a patent application on the Widget on January 1, 2001. A is not barred from getting the patent because the one-year grace period for filing an application applies to any public disclosure regardless of who made the disclosure.

102(b) Example 3 (Current Law—prior disclosure by others): A invents a Widget on January 1, 2000. B invents the Widget independently on March 1, 2000. B publishes a journal article describing the Widget on April 1, 2000. A files a patent application on the Widget on January 1, 2001. B files a patent application on the Widget on February 1, 2001. A is not barred from getting the patent, even though B disclosed the Widget before A's filing date, because the one-year grace period applies to disclosures of others. Also, because A invented the Widget first, B would not be entitled to any Widget patent rights.

In contrast, under the proposed S.23 bill, the one-year grace period is only available for disclosures made by the inventor or by another who obtained the subject matter directly or indirectly from the inventor (see 35 USC 102(b)(1) & (2) of S.23). Thus, under the proposed S.23, if the inventor or someone who obtained the invention from the inventor publicly discloses the invention less than a year before the inventor files an application, the invention can still be patented. However, a public disclosure made by anyone else before the inventor files an application will prevent the inventor from obtaining a patent unless the disclosure is subsequent to the disclosure by the inventor or someone who obtained the invention from the inventor.

102(b) Example 1 (S.23—prior disclosure by inventor): A invents a Widget on January 1, 2000. A publishes an article describing the Widget in a journal on March 1, 2000. A files a patent application on the Widget on January 1, 2001. Under the proposed S.23, A is not barred from getting the patent because there is still a grace period for disclosures made by the inventor within one year of the filing date of the patent application.

102(b) Example 2 (S.23—prior disclosure by others obtained directly or indirectly from inventor): A invents a Widget on January 1, 2000. B learns about the Widget from A, and publishes a journal article describing the Widget on April 1, 2000. A files a patent application on the Widget on January 1, 2001. Under the proposed S.23, A is not barred from getting the patent because the one-year grace period also still applies to disclosures by others who obtained the information either directly or indirectly from the inventor.

102(b) Example 3 (S.23—prior disclosure by others): A invents a Widget on January 1, 2000. B independently invents the Widget on March 1, 2000 and publishes an article describing the Widget on April 1, 2000. A files for a Widget patent on January 1, 2001. B files a patent application on the Widget on February 1, 2001. Under the proposed S.23, A is barred from getting the patent because the Widget was disclosed by B before A's filing date and B did not obtain the information disclosed from A (either directly or indirectly). Interestingly, although A's application is a disclosure, A's application is not prior art against B's application because B publicly disclosed the Widget before A's filing. Therefore, B would be entitled to the Widget patent.

Comparison of the 102(b) Examples

Under both the current law and S.23, a disclosure made by the inventor or by another who obtained the subject matter from the inventor, will not bar the patent application as long as the application is filed within one year of the disclosure. In the 102(b) Example 1 and 102(b) Example 2 for both the current law and S.23, A can get a patent because A's patent application is filed within the one-year grace period. The scenarios for a prior disclosure by the inventor or by another who obtained the invention from the inventor are illustrated below:030211_1917_Comparisono4 030211_1917_Comparisono5

However, S.23 differs from the current law when the first public disclosure is made by a party other than the inventor or someone who obtained the invention from the inventor. Under S.23 such a disclosure prevents the inventor from filing a patent application. In the 102(b) Example 3, A can get the patent rights under the current law, but A is barred by B's prior disclosure under S.23. The scenario for a prior art disclosure by others is illustrated below: 030211_1917_Comparisono6

106 thoughts on “Comparison of the Current U.S. First-to-Invent System with the First-Inventor-To-File System Proposed in the Patent Reform Act of 2011 (S.23)

  1. Any programmer who’s seen a software patent knows the written description and enablement requirements are rarely enforced at all — not surprised there was a lot of testimony to that effect. Of course, that’s beyond the fact that pure software patents being pure math, most software patents are illegal to start with.

    Even the ones which aren’t pure math (which involve novel hardware, novel interactions with the physical world, novel applications of properties of human perception, etc.) tend to be lacking on written description and enablement.

  2. So this will get rid of the ability of patent lawyers to ignore prior art by “swearing behind” it, as yet another method to get junk patents?

    Good to know that this bill is doing the right thing then.

    Patents on things which are obvious and simultaneously invented by many people *because* they were obvious are causing serious trouble for people with *real* breakthrough inventions.

  3. I have to agree that this system seems closer to the intention of patent law — namely, to promote publication — than the previously existing system.

    It seems carefully thought out, though rules of evidence and legal procedure issues are always a potential “gotcha”.

  4. But I don’t see how what Senator Feinstein describes is worse than FTF systems elsewhere — in the US, you don’t have documentation to prove derivation, in other countries you don’t have a statutory right to prove derivation.

  5. pingaling Malcolm’s contribution be more like: IT be crrp cause I can smell it and say so.

    Our resident patent fluffer is still having trouble with the facts, I see. Do you need to see another example, pingaling? A few more IT txrds just floated out of the office yesterday morning.

  6. Does anyone know whether the changes retroactively affect pending applications? Or will everything now filed be grandfathered into the old system?

  7. Maxie,

    That not be our Sunshine. Malcolm’s contribution be more like: IT be crrp cause I can smell it and say so. Plus, there be no subjective mention of “Grown-up Arts”, nor any mention of his prestigious prosecution success rate (while the rest of the art group “quality” average is hence lowered even beyond the actual pitiful state that the Big D reported on).

  8. It appears that our very own Malcolm Mooney gave evidence to the FTC, to help in the preparation of its monster list of recommendations to improve the US patent system, just now reported on the Zura blog. The Executive Summary includes the sentence:

    “There was considerable testimony, however, that the written description and
    enablement requirements have been much less stringently enforced in IT industries than
    elsewhere, leading to concerns over ambiguous scope.”

  9. Another method of chumping of inventors may have developed since the beginning of the Kapos era at the uspto. In a campaign to improve application quality (technical precision) not to be confused with improving markatable products patents of witch theres only a hand full as opposed to the 275000 trash patents granted yearly that are now techmically correct.By eliminating the initial disclosure document program and requiring technical persision even in the provisional filing the chumping of the intellectual materials without witch the subsequent improved patent application would not exist occurs. The conceptional inventors who are not as familiar with big business previous art are being disqualified and their I.P.conceptions stolen. This needs to be corrected or the incentive to create is destroyed also.

  10. In the event of interoffice corruption suspician the other provision that should be added to ensure correct inventorship determination is due date by classificatrion filings by public forum live or video recorded inventing competitions with immediate internet and worldwide cordinated patent offices check for novelty.

  11. Clearly lack of filing for 1 year needs to be considered the less credible method of evidencing the potential for idea theft is larger even with documented notebook. The odds of independant invention are astronomical accidental divulgment duress situations and intimidations are far more the normal situation. The only way the non filer should win is buy large scale invention clusters evidencing and due to indegency as far as financial filing ability.Of course lack of inventor security is also an issue. This should be backdatable to the first instance in my case 57 years.

  12. Ive been trying to get the uspto to put the top 10000 inventions of the last 57 years into my name using invention clusters evidensing so far no luck oboma has def ears on this also. The law in its oversimplified version is a big business attempt to obstruct justice by changing the method of determination to one without consideration of who invented the invention. The four method system of mcain is the one eye need to actually recieve credit payment for previous and future inventions.

  13. PhilS. Here’s what you can find on a parallel thread:

    “IANAE said…
    Does anyone think they’ll make the law applicable only to applications filed after the date of enactment?

    It goes without saying that they will (though I’ve said it once or twice), and you’ll also have a bit of notice before the bill finally passes because of all the time it takes for the votes and signing and such.

    I expect we’ll see a flurry of applicants madly filing patent applications in the days before any FTF bill is signed, and then it’ll be a couple of decades before the old-timey cases work their way through the system and judges can stop applying the old law.”

    Does that reassure you?

  14. Out of curosity, is this change in the law intended to be retroactive to all apps currently pending before the USPTO?

  15. In case ya havent noticed CC – I aint interested in enlightening you. I am interested in US law for inventors, though. Ya wanna catch up? By all means – but dont do it by tearing down (proverbially – since ya can only advocate such on blog comment pages) our system.

    Your next comment should include the answer to: “Why would anyone think that making a patent weaker is an improvement?”

  16. Also lost in the shuffle is who has to prove what to whom.

    Feinstein:

    Another problem with the bill’s first to file system is the difficulty of proving that someone copied your invention. The bill’s proponents assert that it protects against one person copying another person’s invention by allowing the first inventor to prove that, and I quote, “such other patent was derived from the inventor of the invention.” Currently, you as a first inventor can prove that you were first by presenting evidence that’s in your control: your own records, contemporaneously documenting the development of your invention. But to prove that somebody else’s patent application came from you (under the bill, was “derived” from you), you would have to submit documents showing this copying. Only if there was a direct relationship between the two parties will the first inventor have such documents. If there was only an indirect relationship, or an intermediary (for example, the first inventor described his invention at an angel investor presentation or he didn’t know the identities of many in attendance), the documents that show derivation (which means “copying”) are not going to be in the first inventor’s possession. They would be in the second party’s possession. You would have to find out who they talked to, who they e-mailed with, to trace it back to your original disclosure. But the bill doesn’t provide for any discovery in these derivation proceedings. So the first inventor can’t prove their claim.

    Go Girl Go!

    The rest of the Senate snobs mayignre you, but trust me, the US “House of Commons” aint about to let such juicy arguments go.

  17. If were going to have a true integritious system we will have to get rid of the rule of latches also you cant call it justice when the office makes errors then says sorry chump you loose thats more inovation retardation.

  18. I’m happy to call it first-to-file as long as everyone knows what it means. Unfortunately in the USA they don’t.

    The reason why the bill’s supporters concocted “first-inventor-to-file” is because a number of independent American inventors assumed that a first-to-file law (as found in RoW) would allow anyone to steal their invention and get a patent for it, when they had no right to it.

    Hence all the arguments about first-to-file being unconstitutional, because the Constitution says that the exclusive rights should be secured for inventors, not thieves.

    Of course, no country’s first-to-file law authorises a patent for someone who derives no rights from the inventor. But it needed to be explained.

  19. This reform bill doesent include the mcain plan methods of inventorship determination and there is no reason why it shouldent. The more methods the more accurate the system gets clusters of invention need to be considered to determine master inventor status of an applicant.

  20. The odds of that are astronomical one invented it me usually the others are trying to steal it after devulgment accidental or intentional We need the initial document disclosure program back with the 62.00 economical fee waved in the instance of indegency.

  21. Just because the patent has issued doesent mean it shouldent be retracred on new evidence this fails to recognize the parent patent without witch the others would not exist.If the office cant do its job correctly them they need to be replaced with workers who can assuming that their not on the take.This nightmare to an inventor is the final proof of no justice in the system and extremley invovation retartive.

  22. meine freund,

    Sorry, I didn’t realize you were German.

    I meant that we saved a bit at the west from a bit that was to the east of it. You see, in 1917, the “bad guys” went from fighting on two fronts to fighting on one. Because they were no longer falling victim to the most well-known classic blunder, it sure was convenient that another country joined up to fight them at around the same time.

    I don’t see what any of that has to do with Huns, who I always thought were Asian.

  23. And, just because Europe is largely composed of constitutional monarchies or Westminster systems, does not mean that we should scrap our form of government for European forms of government for harmonization purposes. That is the height of nonsense, but it is the crux of the argument being advanced by the harmonizers.

  24. Max, in hindsight, I suspect even the English wish they could have done more to prevent WWI rather than fight it to the “Pyrrhic” they achieved. WWI undid English power and the old order big time, killed off millions, and was a direct cause of both the later war in China that sparked the Pacific War and the pan-European twenty years later. It also destabilized the Mideast, which has not done anyone anywhere any good.

  25. We saved “Western Europe?”

    What “kind” of nonsense it this? The Germans, meine freund, were not and are not Huns. 1914 was not a repeat of 451.

    You sound a dupe of English and Wilsonian propaganda.

  26. I think I get where IANE is coming from. It is kind of is like a provisional application. The problem is the proposed 102(b)(2)(B):

    (2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if — (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor ….

    If it weren’t for this, Inventor A’s application (which can’t be granted because of B’s disclosure) would become published and then be 102(e) art (or whatever the equivalent is under the reform bill), which would prevent B from getting a patnet. Then no one would get a patent, which is how I think it should be (otherwise it isn’t FITF but “First Inventor to Publish And Then File Before Another Inventor Publishes OR First Inventor To File If No Inventor Published”). Well, that really doesn’t make sense, but you should get the point.

  27. Spot on, Ned, about the mistakes. Europe makes plenty of them. Study them hard. Learn from them. Absolutely. Good idea. Tell me about the ones I haven’t detected yet. I’m interested.

    You are wrong about that judge though. He isn’t smug. He just knows how to get the full attention of the specific audience. He was speaking in English, of course, to an audience of German patent attorneys.

  28. WWII was the last time the US armed forces actually fought for American freedom

    Um sure, yeah, let’s go with that.

  29. I feel compelled to point out yet another apparent defect in the current system

    Aint a bug, it be a feature.

  30. Max, your smug English judge’s American joke is just one example of why we all need to study Europe to avoid repeating their mistakes.

    Surely we already know what a bad idea it is to try telling jokes to a German audience.

    What happened? Arguably, that act destabilized the world, let to WWII, the establishment of communism and a whole host of subsequent cause and effect disasters.

    Or, arguably, that act saved Western Europe after Russia was removed from the war by its own communism-establishing internal strife that the US had nothing to do with, thereby causing WWII only because the bad guys hadn’t already got everything they wanted in WWI.

    Lest we forget that WWII was the event that established the US as an important country in the world, forced the US to rapidly advance its technology and industry across the board, ended the Great Depression, established nuclear weapons as a global deterrent to attacking the best few countries in the world (including ours), and also finally secured American women a permanent place in the workforce.

    WWII was the last time the US armed forces actually fought for American freedom, and they sure brought home a lot of it.

  31. Max, your smug English judge’s American joke is just one example of why we all need to study Europe to avoid repeating their mistakes.

    At the time of the French revolution, Washington warned us not to get involved in the wars or politics of Europe. We heeded his advice for a very long time, but some naive president of ours decided to get involved in WWI. What happened? Arguably, that act destabilized the world, let to WWII, the establishment of communism and a whole host of subsequent cause and effect disasters.

    When the Euros want to be stu – pid, just get out of the way an let time is a good motto.

  32. We do not live in a world of idiots, Paul.

    I take this to mean that what the applicant really wants is not an actually valid patent, but a patent he can successfully use in practice to get money from the defendant of his choice.

    In that context, yes, any affidavit you can slip past the examiner is good enough. Maybe you can score one of those 0.5-2 million dollar settlements to save the defendant a comparable expense in litigation. And somehow, I feel compelled to point out yet another apparent defect in the current system.

  33. Paul, assuming the 131 affidavit is adequate, and the reference is an anticipation (obviousness remains arguable even if the 131 affidavit turns out to be insufficient), do you really believe a defendant can, with any reliability, move the invention date of a third party reference back far enough in the ordinary case?

    I am aware of only one case where this has happened. One. And that was long, long ago.

    Why doesn’t this happen more?

    Because the owner of the reference knows that he is immune from a patent suit so long as he keeps his powder dry, keeps his mouth shut and remains non cooperative. Should he join the coalition defense, all bets are off. He may be facing damages and an injunction himself.

    We do not live in a world of idiots, Paul.

  34. Paul I have seen numerous 131 declarations in patent files accepted by examiners that were invalid on their face.

    So have I, but I can guarantee you that some commenters here have never ever seen such a thing and you are a bad person for even bringing it up.

    Isn’t there some inequitable conduct case pending before the CAFC that deals with such a declaration? Therastoopit or something like that?

  35. Since eliminating the usage of Rule 131 declarations would seem to be the most-lamented “first to invent” change if this Bill passes, it is worth further discussion.
    Yes, some patent attorneys and agents now get some minor percentage of their clients patent claims allowed by using Rule 131 declarations to “swear behind” (instead of distinguishing over) prior art cited against them. That is often fairly easy, since they are ex parte, unchallenged, and “examined” only by a single non-attorney examiner with no training or experience in affidavits.
    But are they really doing their clients a favor if they are getting unenforceable patents that way? What is the number of such patent claims obtained with 131 affidavits that survive in litigation? The only study I have ever seen, an old JPTOS article by Mary Helen Sears, says very few survive in litigation. Once a 131 declaration gets factually or legally challenged, the claims obtained that way are in deep trouble, with no basis for their allowance left over their initial rejection. I have seen numerous 131 declarations in patent files accepted by examiners that were invalid on their face. E.g., 131 allegations of prior invention based on bare conception with no evidence of diligence whatsoever, 131 declarations used even where there was a foreign equivalent publication 102(b) bar, etc. Furthermore, a 131 declaration is merely swearing behind the filing date of a reference. It does not mean that the inventors or owners of the reference cannot later prove an even earlier 102(g) invention date themselves. In fact that is often the case. Also, inequitable conduct charges are a particularly high risk for patents obtained with sworn affirmative representations, which 131 declarations are. Many responsible law firms and corporations do not affidavit-inexperienced patent attorneys to use such affidavits to obtain allowances without experienced supervision.

  36. I’m confused by 102(b) Example 3. Inventor A was the first to invent and the first to file, yet somehow Inventor B gets the patent. What???

    That is one of the weird things about this complicated new grace period.
    B’s public disclosure essentially serves as a kind of provisional application

    It’s not at all like a provisional application.

  37. Inventor A was the first to invent and the first to file, yet somehow Inventor B gets the patent. What???

    Inventor A waited too long to file *or* disclose the invention. You snooze, you lose.

  38. I’m confused by 102(b) Example 3. Inventor A was the first to invent and the first to file, yet somehow Inventor B gets the patent. What???

    That is one of the weird things about this complicated new grace period. B’s public disclosure essentially serves as a kind of provisional application. It’s prior art against A, and it gives B an effective priority date against later public disclosures by A. But only under some very specific conditions.

    It really would be simpler to abolish the grace period entirely. Disclosing the invention to the public prior to filing causes no end of trouble for the patent system, and it’s really not something you need to do in order to get a patent.

    If you’re going to work that hard to disclose the invention to the public in a non-patent context (journal article, potential investor, friend at the coffee shop) before you’ve even filed a provisional, it’s just possible that giving the invention to the public was more important to you than keeping it for yourself, and your rights should reflect that reality.

  39. I’m confused by 102(b) Example 3. Inventor A was the first to invent and the first to file, yet somehow Inventor B gets the patent. What??? That seems to be proof that the proposed system is not actually First Inventor To File (FITF).

    Inventors are usually counseled not to make any disclosures until after they file (because of the ROTW), but in this example, the prior disclosure actually saved B’s ass and allowed him to get the patent (at least in the U.S.).

    Am I missing something? This exception for your own publications causes an odd anomaly. I say get rid of it, and then neither A nor B get a patent. How hard is it to just not publish (especially if that’s what you need in much of the ROTW)? If you can’t follow directions, then the public gets your invention for free. (That promotes the progress ….) Plus, proving derivation might be difficult in any event. Someone could take your publication and republish essentially the same stuff. Depending upon how creative they were, it might be difficult to prove derivation.

    Also, I believe the new system would keep 102(e) secret prior art for obviousness purposes. (I’ve heard some suggestions of changing this to be like the European system). But I guess we are getting rid of the 102(g)(2) secret prior art (which I guess makes sense in a FTF system). Personally, as a litigator, I like secret prior art.

  40. Heh, I’m quite sure we are talking of the same English judge, indeed. That English patent judges are quite opinionated is something that many people in Southern Germany can vouch for, in particular those working in a particular spot by the Isar river.

  41. Awarding the runner-up based on a technicality is not going to cut it when it is all said and done.

    Letting the runner-up win based on a technicality would indeed be unfair.

    Re-defining “winning” so that a different person is entitled to the prize, and then enforcing the new rule fairly and consistently… well, there’s nothing wrong with that.

    If they changed the Superbowl to two games out of three, it wouldn’t be unfair to give the trophy to the team that lost game one but won games two and three. Not even taking into account the solid, long-standing tradition of giving it to the team that wins game one.

  42. The point was that there is a solid, long standing tradition, going back many centuries, that says that the first to invent gets the prize. Awarding the runner-up based on a technicality is not going to cut it when it is all said and done.

    “There is no room for second place. There is only one place in my game and that is first place. I have finished second twice in my time at Green Bay and I never want to finish second again.”
    Vince Lombardi

  43. I can top that CC. I once sat in a large hall in Southern Germany, to hear an address by a prominent English patents judge. As you know, the English like to begin with a joke. He began: We can all learn an awful lot from the Americans.

    Stunned silence.

    He continued: Watch what they do and then make sure you don’t do the same.

    Much laughter. Ice broken.

    Which was just as well. For then he continued about the Doctrine of Equivalents. His thesis was that it was not right and so the German judges should stop following American jurisprudence on this aspect of patent law.

    Perhaps it was the very same patents judge. There aren’t many of them, in England. Having been patents barristers for 20 years before they take up judging, attacking patents one day, defending them the next, they are all very opinionated.

  44. Mark, thank you for telling me what feelings I’m supposed to have.

    Now, please tell me how I should feel when the poor independent inventor cheats the big company out of millions of dollars because he got to the patent office first.

    I hope I used that word correctly. I wonder if it’s only “cheating” when the big company wins.

  45. Oh, I agree. That’s why, after you’ve won your case, EPC Art. 61 gives you the option to draft your own application and claim priority from the other guy’s filing date.

  46. Well, MaxDrei, I once heard a pretty famous English patent judge say:

    “Every country is proud of its legal system and believes that it is the best in the world. Well, except us Brits, since we have seen what a mess our American cousins have made of it.”

  47. ping, really, instead of flippant comments, you may be able to enlighten me by explaining how an inventor is better protected against a greedy US corporate “assignee” than against a greedy European corporate “patentee”.

  48. Well just wait until 60 minutes does their first expose of the patent system and the poor inventor getting cheated out of millions of dollars because a big company and their lawyers beat him to the patent office. You all will be running for cover then.

  49. This is a very powerful incentive for European corporations not to screw over the inventors

    Correction – this is a very powerful incentive for European corporations to thoroughly screw over the inventors at the onset, so that they cannot question the transfer of rights.

    Let’s try to stay real CC. Europe just dont got teh little guy mentality.

  50. It is a difference in name only, ping.
    What you must understand here is that in the RoW you have the inventor and the patentee, who may be the same person, or not. However, if they are not the same person, the patentee (corporate or otherwise) must be able to prove that it is the rightful successor in title to the inventor. Same as a US “assignee”, really. You say potayto, we say potahto.

    In any case, if a corporation (or an individual) files a patent application in Europe without a proper transfer of rights from the actual inventor, it risks having its patent application or granted patent returned to its rightful owner in litigation. And litigation is considerably cheaper here than in the US.

    This is a very powerful incentive for European corporations not to screw over the inventors: in the worst-case scenario, the corporation not only risks losing the patent after having gone through the whole expense and effort of obtaining it, there’s even a high risk of seeing the patent fall back into the hands of somebody with a big grudge against the corporation. A very unpleasant situation, if the corporation has started exploiting the invention…

  51. Except in socialist countries, property belongs to individuals.

    Um, Maxie, not even close to being true. Have you ever worked in the “real world” of business? Ever seen an assett list of “property” owned by a corporation (hint: not an individual)?

    OK Maxie?

  52. Don’t know about the French in particular IANAE. The Chinese, the Japanese, the Koreans, the Germans, they are all 100% civil too, and I suspect them all, at least as much as I do the French.

  53. Hardly seems fair either way, since each of them invented it independently.

    OK, who kidnapped my main man and substituted this charlatan? This aint even 6-level crrp.

  54. Another topic on which the US think they are the smartest on earth but do not see they are behind….

    Yet another opposite-day comment concerning changes to US law by a non-US blogger.

    Feel free not to come around federico.

  55. English common law fact-finding is miles better at getting to the facts than civil law mainland Europe.

    Is that why, when the French say “let’s be civil about this”, you always suspect they’re hiding something?

  56. In Europe, on the other hand, A doesn’t need to have filed any patent application at all. Once it has been proved that B derived the invention from A, Art 61 EPC allows A to take over B’s application in his/her own name.

    How many of us would rather take over someone else’s specification than draft our own? In Europe, of all places. Show of hands, please.

  57. if Leibniz had been granted the US Patent, he could have excluded even Newton from using it.

    That’s right. If either one had been granted the US patent, he could have excluded the other from using it. Hardly seems fair either way, since each of them invented it independently.

    Perhaps that’s why I find it so comforting that Newton lived in England and Leibniz lived in Germany, where US patents have no effect, and both died long before the US even existed.

  58. We are arguing about “property”. Except in socialist countries, property belongs to individuals. But inventors are sometimes (usually, these days) employees, paid to invent, under a contract which defines who owns the inventions that the employee inventor was paid to invent.

    What is so strange about the right to a patent belonging to the owner of the invention? Does not property usually vest in its owner? Besides, the EPC recites:

    “The right to a patent shall belong to the inventor or his successor in title…..”

    Successor in title, then, is the exception to the primary rule in the EPC, that the inventor is the owner.

    OK ping?

  59. AFAIK individual inventorship is the worldwide standard.

    Ya dont know too much.

    The only difference of the RoW with respect to the US is that the corporate owner of a patent can call itself “patentee” rather

    The only difference being the major difference, but besides that, its the same, right?

    Stunning logic there CC.

  60. Also lost in the shuffle is who has to prove what to whom.

    If this becomes law, how does one prove a negative of someone else not deriving the invention? What standard will be accepted? Will it be a sum totality of the circumstances with motive (duh), opportunity, causality, the latter party showing a mere possibility of knowledge by the prior party?

    O the gnashing of teeth.

  61. Well, I for one think the biggest seismic shift would be to the way that obviousness is decided, as of the filing date rather than the date of conception.

    You see, as of the filing date, the writing of the specification is anterior. So we can compare two anterior acts, namely the making of the specification and the making of the state of the art, to explore whether the application discloses an invention that was not obvious as of the filing date.

    As of now, ROW cannot imagine doing obviousness as of the conception date, while the US cannot imagine how one might do obviousness on the basis that the writing of the spec was anterior to the decisive date.

    Bit airy-fairy, I know. But wait and see.

  62. I like the story CC. English common law fact-finding is miles better at getting to the facts than civil law mainland Europe. Without discovery and cross-examination of expert witnesses, we would still be in the Dark Ages of patent litigation. it is only the threat of litigation in a common law country that prevents rampant fibbing to the EPO.

    But of course, that was a juristic innovation 700 years ago.

  63. Well, wasn’t there a case in which atomic analysis of the ink was used to prove that a research notebook presented as evidence in interference proceedings had been backdated? So, FTI does advance innovation, if not technical, at least forensic…

  64. RoundandRound, you are roundly wrong: AFAIK individual inventorship is the worldwide standard. All patent laws I’m aware of (and it’s a fair few ones) consider that it is the inventor who has right to a patent. The only difference of the RoW with respect to the US is that the corporate owner of a patent can call itself “patentee” rather than “assignee”, but the individual inventor always has the right to be named as such, and woe the patent applicant (corporation or individual) who files a patent application without a proper transfer of rights from the rightful inventor…

  65. Yeah federico but, thanks to the unique features of the US patent system, there are, still today, ever-bigger piles of world-beating technical innovation coming out of the USA. Are there not?

  66. what an outdated patent law !
    it is high time that it moves ahead making it possible to make it simpler. In the EP system and in all other patent laws, the first to file is not a problem.
    Another topic on which the US think they are the smartest on earth but do not see they are behind….

  67. The rest of the world does not respect individual inventorship. Corporations can file patents in the name of the janitor.

    That’s why the issue of whether it is accepted around the world as a working system is utterly specious.

  68. The United States patent system is based on a unique “First-to-Invent” doctrine, which means that the inventor who first conceived of the invention and then diligently reduced it to practice by filing a patent application (or actual reduction to practice) is considered the first inventor and is entitled to patent protection.

  69. Paul

    You’re right that US interferences are rare – probably because they are so expensive that few people can afford them even if they have a good case. The usual reason it is difficult for a later-filer to win is because of the hoops that the law makes him or her jump through. (Having meticulous records that prove conception, reduction to practice and diligence between the two – are those not still important evidence even in cases of derivation under the current law?)

    Whether the proposed derivation proceedings under the new law will suffer similar problems I can’t say.

    As to the European system (called entitlement proceedings, rather than derivation) I don’t have any figures as how often the claimant/plaintiff wins, but it certainly does happen, and without the need for him to have filed his own patent application.

    It is complicated by the fact that the actual determination of the entitlement to the patent is conducted under the relevant national law, not by the EPO. I would therefore expect there to be substantial variance from country to country, depending on their procedures.

    The EPO then merely acts on the results of a final decision made by a national patent office or court.

    I’m not going to pretend that the European system is perfect, but I can’t imagine anything much worse than US interference proceedings.

    I do know that entitlement cases come up quite often in the UK Intellectual Property Office. Here are their published decisions if you want to do some research.
    link to ipo.gov.uk

    If you look at some of these, you will find that not all of them are about an allegation that someone filed an application when they weren’t the true inventor. There are also some disputes between co-applicants who have subsequently fallen out with each other.

    And there are some cases which were uncontested, and some where the hearing officer felt it appropriate to leave the matter to a court.

  70. Not likely Makry-mark. Calculas bein pure math, Leibniz woulda failed.

    Now if Leibniz did not fail then ya woulda had a whole lota more people than just Sir Isaac not likin that.

  71. Yes but consider this–if Leibniz had been granted the US Patent, he could have excluded even Newton from using it. I’ll bet old Sir Isaac would not have liked that!

  72. Sunshine, Your “fluffing” is as defined as several of the critical terms of S. 23.

    That is to say, not at all.

  73. But if the client is interested in enforcable patents, try enforcing most of the patents obtained that way [where the real invention dates of both the patented invention and the reference will be contested].

    And what are the current stats for percentage of active patents that are actually litagated as the way of enforcement?

    What was that phrase Paulie – “tempest in a teapot“?

    The next phrase that comes to mind:

    Would you like one lump or two?

  74. IPman, I’m curious under even your reported EPC derivation system how many later-filers or non-filers have actually succeeded in taking over the patent application of another for themselves? I would bet it is rare indeed.
    In the U.S. derivation cases are rare and can be difficult interferences to win. Rarely will the rare scientist or engineer swiping the invention of another be the kind to ever admit to it, rather than swear they invented it themselves. Furthermore, it is further disilusioning to “first to invent” fans to see how strong a presumption there is that whomever filed first is the first inventor. [Another reason why this is something of a "tempest in a teapot."]

    As to an above comment that the present U.S. system allows easily “swearing behind” a reference rather than distinguishing over it with a Rule 131 declaration: Sadly true, since that is done ex parte, uncontested, past non-lawyer ordinary examiners who are rarely experts in 102(g)or its case law. But if the client is interested in enforcable patents, try enforcing most of the patents obtained that way [where the real invention dates of both the patented invention and the reference will be contested].

  75. Martin, the proposed “derivation” proceedings still don’t give the true inventor A as much benefit as s/he gets in Europe under Art. 61 EPC.

    Under the US proposal, A can only start derivation proceedings if s/he has filed his/her own patent application.

    In Europe, on the other hand, A doesn’t need to have filed any patent application at all. Once it has been proved that B derived the invention from A, Art 61 EPC allows A to take over B’s application in his/her own name.

    Alternatively, A can file a new application for the same subject matter, perhaps many years later, claiming priority back to B’s filing date. (And have B’s application refused, of course.)

    link to epo.org

  76. This is supported by the fact that history acclaims Newton as the inventor of calculus,

    … but we do all our calculus in Leibniz notation.

    Historical notoriety is not really the same thing as who should be entitled to patent rights. A lot of other factors contribute to our collective memory, such as which country won certain pivotal wars, who had better professional connections, and who had the good sense to name his discovery after himself. Did Maxwell invent Gauss’s Law? Probably not, but he had the foresight to put his own name on it.

    And nobody ever gives Archimedes his due for his contributions to limits and calculus. He predated Newton by a good while, and his work is certainly material prior art.

    Most importantly, patents are a limited-time right. They don’t care what happens 21 years later, and they shouldn’t. The inventor’s name may or may not belong to history at that point, but the invention belongs to the public.

  77. link to en.wikipedia.org

    Leibniz occupies a prominent place in the history of mathematics and the history of philosophy. He developed the infinitesimal calculus independently of Isaac Newton, and Leibniz’s mathematical notation has been widely used ever since it was published. He became one of the most prolific inventors in the field of mechanical calculators. While working on adding automatic multiplication and division to Pascal’s calculator, he was the first to describe a pinwheel calculator in 1685[4] and invented the Leibniz wheel, used in the arithmometer, the first mass-produced mechanical calculator. He also refined the binary number system, which is at the foundation of virtually all digital computers.

    In philosophy, Leibniz is mostly noted for his optimism, e.g. his conclusion that our Universe is, in a restricted sense, the best possible one that a God could have created. Leibniz, along with René Descartes and Baruch Spinoza, was one of the three great 17th century advocates of rationalism. The work of Leibniz anticipated modern logic and analytic philosophy, but his philosophy also looks back to the scholastic tradition, in which conclusions are produced by applying reason to first principles or a priori definitions rather than to empirical evidence. Leibniz made major contributions to physics and technology, and anticipated notions that surfaced much later in biology, medicine, geology, probability theory, psychology, linguistics, and information science.

  78. I think the original basis for our “first to invent” system has not been adequately addressed. There has always been recognized to be something special about being the first to invent something in time. This is not the best example because of the subject matter, but consider the invention of calculus. We all know that Newton invented calculus first, and then Liebniz independently invented it later, but published first. It would just seem wrong to let Liebniz be the one to own the rights and exclude the public for 20 years, and profit from the invention, when he was not in fact the first one to invent. This is supported by the fact that history acclaims Newton as the inventor of calculus, and Liebniz has been largely relegated to a footnote.

  79. My personal troll, pingaling, takes a break from fluffing patents and yapping about windmills and miraculously manages to wrap his wet puppy lips around the entire USPTO Board of Patent Appeals and Interferences. Amazing!

    Keep fluffing, pingaling! It’s what you do best.

  80. Nothing is worse than the present system for resolving interferences.

    Overblown and most irrelevant comment of the day award goes to Sunshine – We have a winnah!

  81. ping Ya need to pay attention – “FTF is well accepted around the world as a working system” may very well be true – but S.23, as is broadly being noticed, is not FTF. It is a bastardized system that is the worst of all worlds.

    Nothing is worse than the present system for resolving interferences.

  82. “However, unlike most other countries in the world with a first-to-file system, the FITF system proposed in the S.23 bill has an exception for the situation where the first party to file “derived” the invention from the second party to file.”

    Just for the record: In Europe, the EPC provides a similar protection against people deriving an invention from the true inventor (Art. 61 EPC).

    I am sure I am not the only european heartily cheering for you guys to (finally) join the rest of us on the FTF team.

  83. Also I have another question, is there any way to get to be allowed to sit in on the entirety of the patent reform senate debates?

  84. what are the odds lawmakers will actually appreciate what it is they’re contemplating doing?

    I don’t mean to imply that I have any confidence lawmakers will actually appreciate what they’re contemplating doing, but I do think the FTF concept is much simpler than the length of this article suggests.

    All the above complexity comes from intricacies of an arcane first-to-invent system. FTF has two timelines – A files first, or B files first. The complexity comes from FTI’s myriad exceptions to that rule based on all the permutations of when A and B conceived, reduced to practice, and filed.

    One might well ask whether lawmakers had any idea what they were doing when they spawned the FTI and interference systems.

    Also, Daniel, I’m curious about the “detriments” you see relative to foreign FTF systems. It seems like the big difference is that Europe requires absolute novelty, so in some of the above examples neither A nor B would get their patent.

  85. Hey guys I has a question about the reform bill.

    When we do away with 102(a) and (e) what happens to section 103(c)? Or is there a portion of the bill that I’ve missed so far that addresses this?

  86. Well, my real point got lost in the shuffle: that if it takes a long post to illustrate the differences between the present and proposed systems (and that's just with regard to novelty, there's no discussion of how obviousness determinations would be affected), what are the odds lawmakers will actually appreciate what it is they're contemplating doing?

  87. Danny boy – no need to apologize for “being terse”.

    You was being correct as you stated “what’s been proposed” – it was the Big D who jumped at calling “what’s been proposed” the same as FTF.

    I admonished earlier, but the fun system here did not recognize the “reply to” button and thus posted as a separate entry below.

  88. It’s not just interferences we’ll be losing with this bill. It’s also the ability to swear behind junk references supplied by examiners to support lame 103s, as an expedient alternative to fighting, in the BPAI and CAFC, the uphill nonobviousness battle created by KSR and underscored in the recent CAFC decision Tokai v. Easton (see dissent by Newman who, as usual, is the sole justice to “get it”). The version of “first to file” that this bill will create will rob inventors of patents they rightfully deserve by depriving them of the tool of Rule 131 affidavits.

    Also, can we dispense with the euphemism “first inventor to file” concocted by this bill’s supporters? If we’re going to call it that, then for the sake of balance, we need to start calling “first to invent” “first filer to invent” (FFTI).

  89. without an actual reduction to practice or continous dilligence

    That is some mighty big lifesaving words ya be handwaiven away there Paulie.

  90. That’s what I get for being terse. I didn’t mean to imply that FTF as it’s practiced by the EPO is bad. And I’m well aware of the prima facie importance of the U.S. filing date under the current US system. But as Hal Wegner and you yourself have pointed out, the present proposal would create a new type of FTF system that differs both from that used in Europe and from the present FTI system used in the USA, in ways that I think are detrimental.

  91. This is a truely academic exercise without pointing out that a mere handfull of second-to-file applications actually win patent claims in interferences by proving priority-of-invention in recent years. As opposed both parties losing claims on 102, 103, 112 or other unpatentability issues, decided first. As opposed to holding that the first-to-file was not really first-to-file by not having adequate 112 disclosures. Even for those who can afford such expensive and complex litigation.
    Furthermore, few inventors [and not enough patent attorneys] understand that under 102(g)and the case law, a bare conception alone, without an actual reduction to practice or continous dilligence, is NOT a prior invention. Nor do many appreciate that in addition to 102(b) bar time limits to asserting prior invention dates there are now the belated claiming bars of both 135(b)(1) AND (b)(2), impacted by application publications in the U.S. or elsewhere.
    Futhermore, someone who was first to file but had derrived that invention from someone else is not just subject to an interference. Their patent is subject to invalidity attack under 102(g), false inventorship oath accusations, and inequitable conduct unenforceability.

  92. Big D,

    Ya need to pay attention – “FTF is well accepted around the world as a working system” may very well be true – but S.23, as is broadly being noticed, is not FTF. It is a bastardized system that is the worst of all worlds.

    Your comment will get ya goin backward.

  93. It’s funny, but so many independent inventors seem to tacitly assume that they’ll always be Inventor A in these scenarios – the first inventor who is unfairly denied his patent under the new system. An independent inventor (or any inventor, really) is just as likely to be Inventor B, who would not only benefit from FTF but would do so at a much lower cost to both parties.

    The real advantage of prior inventorship is that you get a head start in the race to the patent office. On top of the time you save by not having to deal with a large corporate bureaucracy just to get your invention acknowledged, prioritized, approved, farmed out to counsel, reviewed, redrafted, and someday eventually filed. A large company with a huge R&D department is far more likely to invent the thing first than to win the race from the lab to the PTO.

  94. Kudos to the authors.

    To me, the proposed rules look more fair, especially in view of 102(b) Example 3. Why should a later-filer get the patent when an independent inventor earlier disclosed the subject matter to the public?

    Isn’t this more what Holmes had in mind in Alexander Milburn?

    link to caselaw.lp.findlaw.com

  95. Daniel – I don’ think that calling first-to-file idiocy gets you very far. FTF is well accepted around the world as a working system.

    Even here in the US, the filing date is extremely important because of 102(b) bars and because of the difficulty in proving prior invention and diligence or reduction-to-practice. One way to think about the new provision is that it simply places more emphasis on the filing date.

  96. Thanks for the explanation. How many senators (or their staffs) have the patience to carefully go through something like this so they can fully understand the idiocy of what’s been proposed?

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