The potential move to a first-to-file system has received little attention — it is certainly not the most controversial in the current package of patent reforms. Of course, this says more about the Patent Reform proposal than about the potential impact of the first-to-file change. Although not receiving the most press, in the end, this change would have the most impact on the reform package.
The entirely re-written Section 102 would create a bar to patentability if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” prior to the filing of the patent application (the ‘effective date’). [Use Thomas to obtain the most recent version.] The rule would also encompass 102(e) prior art, so long as the prior art filing was prior to the effective date. A one-year grace period would remain in place, but only for public disclosures released by the inventors, the assignee, or a signatory to a joint research agreement.
The first-to-file rule can be thought of as a “race to the courthouse” recording statute. In the world of first-to-file, it does not matter who invented first, only who is the first to file the patent application. A perhaps more salient way to think of the shift is that it primarily operates by shifting the ‘critical date’ of 102(b) to the filing date, thus creating a whole new set of prior art that can be asserted against an applicant.
Apart from whether a first-to-file system is a better system, the legislation itself has problems. Most critical is the inclusion of the ill defined clause “otherwise available to the public.” This clause could easily swallow the entire list of prior art types, except perhaps “on sale.” (patented, printed publication, and public use are all available to the public). We’re left wondering what additional activities will be encompassed by subsequent CAFC decisions.
This amendment would greatly increase the value of creating a joint-research-agreement any time any research or information is shared between parties. In addition, some companies will increase their provisional application filing as a way to ensure that the invention is on file at the PTO ASAP. Of course, this change will have negative little impact on foreign companies seeking US patents or US companies already filing patents internationally because these rules closely mirror the requirements already in place around the world.
The benefits of first to file:
- Encourages inventors to quickly file for patent rights;
- We avoid the potential for fraud in swearing-behind references;
- Interferences are gone (but derivation litigation is in);
- A patent would be more difficult to obtain – especially when the invention is easily conceived by another; and
- Global harmony .
sibal nom
“JD I’m just telling you what the guys in legal say, I have nothing against a 131 personally, and neither do they. They just know to what standard we’re supposed to hold the applicant to in terms of evidence and having forms filled out etc. for it to be worth wasting a court’s time later on.”
6k, the burden is preponderance. Most applicants that have any sort of record keeping requirement for their engineers can meet it. You’ll just have to trust me on that.
No, I’ve never reviewed Mr. Lee’s pros history in detail as it is not a public record. Based on the copy of the BPAI decision and the Fed. Cir.’s affirmance that was posted on the fire of genius blog, my comments regarding In re Lee II were entirely correct.
Herr MaxDrei,
You wrote:
“Small inventors awake. FTI is a lawyers’ conspiracy against your interests.”
Your then affirm the accuracy of Goethe’s observation:
“A man sees in the world what he carries in his heart.”
Doesn’t that mean that you admit to having “conspiracy” in your heart against American inventor’s and their patent attorneys?
Readers know all too well what I carry in my heart: I am passionately patriotic and proud of it.
Now if you’ll excuse me I have some claims to re-draft— I plan to file my first utility patent application pro se today.
Dear Leopold Bloom,
I hope I didn’t leave you with the wrong impression; I hope you are aware that MaxDrei made this denial:
“I didn’t write that the world would be a better place without the small inventor.”
Then MaxDrei challenged me to:
“…can you do us a favour and retrieve the actual words I wrote, re-printing them here, with the surrounding context.”
Do you think my paraphrasing of what MaxDrei wrote was distorted?,
or do you think MaxDrei’s denial was dishonest and disingenuous?
The point I’d like to emphasize is: The
“U.S. ought be careful when Europeans are gleefully exhorting the ‘reform’!”
Max – don’t flatter yourself. I am not trying to impress you.
You are cheering for first to file as if you have an agenda. Your conspiracy theory is hogwash.
Thanks JAOI(TM). Now I have another retrieval task for you. Show us any example, any you like, of a European on this thread, or the related one, “gleefully exhorting” the USA to move to FTF. You can’t. Instead, take “a reader”‘s skewed interpretation of alien contributions to this thread (and your own reaction to it) as yet more proof of the accuracy of Goethe’s observation.
Dear Leopold Bloom,
Yes, it certainly seems to have quieted Max. Commenters should be aware that the “patentlyo.com” search feature, usually found on the bottom right of the first page, is a great convenience to retrieve prior articles and comments — type in a word, or better yet, a phrase comprising several contiguous or separated words, and viola, there it is.
For example, to retrieve MaxDrei’s verbatim defaming comment about the demise of the small American inventor
“… having an aggregate positive effect on the US economy.”
I entered “inventor maxdrei” in the “patentlyo.com” search bar and presto, there were links which took me to one of MaxDrei’s most cruel and abusive anti-American-inventor statements.
First to file is unconstitutional.
The forum selection clause seems to go against the Fed Rules of Civ Pro and case law going back to the founding.
The changes in the prior art rules are strange and will take years to sort out, creating uncertainty and increasing patent litigation (and the cost thereof).
…and why is this a good idea?
“… If they were all to disappear, I can imagine it having an aggregate positive effect on the US economy.”
It would certainly be quieter.
Herr MaxDrei,
OK, here it is: In this thread, “Patent Reform 2007: Apportionment of Damages” you wrote (verbatim):
“So, damages apportionment might lead to the demise of the “small independent non-manufacturing inventor working in high tech”? Is there any reason why anybody should be concerned about the loss of that particular species? Quite the opposite. If they were all to disappear, I can imagine it having an aggregate positive effect on the US economy.
Posted by: MaxDrei | May 28, 2007 at 09:38 AM”
Here is the link to what you wrote:
link to patentlyo.com
On a thread related to this thread’s subject matter,
“Absolute Novelty, First-to-File, and Foreign Bias”
“a reader” wrote regarding this remark in that thread’s article:
————–
“One of our European readers commented that the American grace period is essentially a subsidy to the rest of the world…”
Completely silly. Right now Americans have 4 choices, 1) publish to cut down the trees, 2) file first then publish, 3) publish first then file when circumstance changes, 4) file and keep it secret. The senate bill does away quite a bit of Americans’ advantage. US ought be careful when Europeans are gleefully exhorting the “reform”!
Posted by: a reader | Mar 23, 2008 at 10:49 AM
————–
I do not believe the caution “a reader” raises can be emphasized enough, that the:
“US ought be careful when Europeans are gleefully exhorting the ‘reform’!”
The “US OUGHT BE CAREFUL WHEN EUROPEANS ARE GLEEFULLY EXHORTING THE ‘REFORM’!”
I had given up discourse with you JAOI(TM) thinking it pointless but you have provoked me again. Goethe was right, of course. But you’re a man and not immune either. I didn’t write that the world would be a better place without the small inventor. That’s your heart interpreting what you wishfully think i wrote. If it is so important to you (you keep on worrying on about it) can you do us a favour and retrieve the actual words I wrote, re-printing them here, with the surrounding context.
MaxDrei has posted 29 times on this one thread thus far. For example, on Mar 21, 2008 at 07:26 AM Max wrote:
“Small inventors awake. FTI is a lawyers’ conspiracy against your interests.”
——————–
Herr MaxDrei,
What’s up with that? Why are you conspiring so earnestly on this one FTF issue?
Did you notice the line from Johann Wolfgang Goethe’s “Faust” I posted above?:
“A man sees in the world what he carries in his heart.”
In the past I recall your sentiment that the world would be a better place without small American inventors? Do you recall making that comment?
CaveMan, sorry but the fact that you haven’t heard before of the idea I floated doesn’t exactly impress me much. To trot out hackneyed jibes about how delicate and sensitive the “Europeans” are is unworthy of this blog, and suggests that you have nothing more interesting to contribute. Some Europeans, especially Germans, are indeed perversely nervous of holding cellphones to the side of their head, about genetically modified foodstuffs, and do indeed wistfully think of organising their lives according to the phases of the moon. They also fear climate change, destruction of the environment and other serious stuff dismissed in the USA as nonsense. AND they’re wise enough (even those who go to church) to see that cre8t1on1sts are b0nk3rs. Silly, isn’t it, to catcall backwards and forwards. The idea I floated above is that a US attorney who files second can derive comfort from the thought that, when his client is prospective junior party in an interference, the client will lose, not because of any lethargy on the part of the attorney but simply because of the client’s inability to prove “diligence” up to the level needed to win.
I’m still waiting, for somebody with a reasonable argument to puncture my idea. Meanwhile, from the land of the EPC, that catagenesis of the patent law world, I continue to look with amusement at the armillary sphere of 35 USC 102.
Mr. Pitchford, don’t forget renditions of “Kumbayah…” with those Smores.
Nice try Max, what planet do you come from? I never heard the “attorney consp1racy theory” of FirstToInvent before… I hear the Europeans are also afra1d of microwaves, moonlight and genetically engineered corn. Oh yes, don’t forget “beeware the moors,” “wear garlic cloves at night if you’re in Transylvan1a” and other notable advice. Keep up the good work.
Oh, and JD, hah I saw your comments about In Re Lee? (iirc) on fire o genius. Have you even looked through that case in any sort of detail? Until then you have you should reserve judgment about it the recent affirmation being anything. The case is 17 years old, has 10 references from all manner of arts applied to it, mostly applied AFTER the original Fed Circ. decision. The first rejection was horrendously bad, and not even worded well, it certainly should have been overturned at the BPAI, and Newman simply corrected that. It really has nothing to do with proper taking notice of facts etc. because the girl did a horrendous job of it anyway. Now going into it’s golden years the Fed. Circ. is like: screw you, we’re not looking at it anymore, convince the examiner yourself.
JD I’m just telling you what the guys in legal say, I have nothing against a 131 personally, and neither do they. They just know to what standard we’re supposed to hold the applicant to in terms of evidence and having forms filled out etc. for it to be worth wasting a court’s time later on.
You’ll excuse me, I have to go 112 the second RCA in two weeks that doesn’t have support for their amendment. This is becoming a trend, seriously, I’ve had probably 8 RCE’s so far, and at least 5 of them lacked support for at least part of the amendment. What gives with these guys?
Dear Marcus,
Your comment inspired me more than any other I can remember. I project positive thoughts to you and wish you happiness, health and hope. Stay well and please keep up the good fight— I am thankful for your gift of Inspiration on this glorious Easter Day — keep the faith.
First to file sucks big time; it is a giant step backwards in re prosecution before the USPTO. We most likely still have the best patent system in the world, why belittle our system to accomodate other countrys when it is other countries that should change towards the best system as contrasted to our changing downwardly ? I like our system just as it WAS. There are ample reasons already advanced herein for no more ill-thought-out changes. I am worn down trying to keep up with all the confusing changes of recent years that tend to overburden the Patent System. I am past 80 years old and its evident that this latest insanity is good cause for one to consider taking early retirement. Or take a stroll out into the snow.
“1) You publish “subject matter” on June 1, 2008;
2) I read your publication and include the “subject matter” thereof into my patent application filed on July 1, 2008;
3) [Grace Period] You file your patent application on the “subject matter” on June 1, 2009, relying on grace period of 35 USC 102(a)(1)(B);
4) [First-to-File] PTO rejects your patent under 35 USC 102(a)(2) as being anticipated by my July 1, 2008 application (which I derived from your publication).”
5) [Derivation Exception] You get the opportunity to prove that I derived my application from you – that should more fun than an interference.
The Derivation Exception of 35 USC 102(b)(2)(B) may make a publication and delayed filing scheme almost risk free.
Not exaclty Max, you have the emphasis backwards.
As you concluded, I (and likely most US practicioners) believe that the grace period is there to protect the small inventor who does not know much about patents so that he can have time to seek out advice, maybe even check into commercializing, and get a patent filed and issued. Big corps generally know the rules, know what they want to file, and take care of it without needing a grace period.
We (at least I) don’t look down on the rest of the world as you suggest. We (Americans in general) want to be “in harmony” with everyone else so that everyone can be happy and live peacefully (make smores by the campfire and all). As you pointed out, most of the rest of the world has a FTF system with absolute novelty, no grace period. The way it works is that Big Corp says to (insert politician here which they donated heavily to during campaign season), “Hey, I don’t like this grace period. We always file before disclosure and some of these little upstarts have used the grace period. I don’t like how my engineers hear the small guys talk, add on some features, and then we spend money filing an application only to be limited because of the later application by the small guy.” The politician then goes out and says, “We must close this loophole to be in harmony with the rest of the world. Almost every other major company has a ftf system with no grace period, and we should too so that our systems are in harmony.” The American people hear “loophole” and “harmony” and therefore know that this must be a great proposal because it closes a loophole in our system to bring us into harmony with the rest of the world, because that’s always a good thing (or so we think).
Thanks Mark. On “loophole” you are very illuminating. I had always thought that, in USA, a GP was something to level the playing field, to bring smallman an advantage relative to bigcorp. Am I now to understand you that, in Germany and Japan, a GP is an loophole, typical of misguided ROW, for giving bigcorp a means of squashing smallman?
“Under the new 102(a)(2), such behavior can and will apparently completely extinguishes the grace period of 35 USC 102(a)(1)(B), as to all prior art described within (or incorporated by reference into, I believe) the filed patent application.”
Nope – that’s not right: if derivation can be proven, then the exception of 35 USC 102(b)(2)(A) will apparently apply….
Yes, of course that was a rhetorical question. As you pointed out, our political system is different than in other places. Many Americans believe that “change” is good without ever stopping to consider what they want to change to from what is already in place. “Loophole” is a buzzword here used to push through measures that change the law whether the object of the measure is an actual loophole or just a rule that someone with political clout wants changed. As a grace period is not the rule in foreign practice (except in two very important markets) it would be easily labeled a “loophole” and done away with rather quickly as it would benefit large corporations with political influence.
How long to harmonise the grace period? That would be a rhetorical question to me, right Mark? You don’t seriously want an answer, do you? I’ve a question for you: how long has Japan and Germany had FTF together with a grace period. As far as I know, about a hundred years. And nobody’s advocating getting rid of it. But that’s perhaps because, in those two countries, up to now, patent validity it is a game played out between locals, who play by the understood rules. That might change, however. Clever US corporations are increasingly sampling the joys of those German 10 year patents (GBM) where a grace period obtains.
‘You surmise that, henceforth, Applicants will invoke the prior art, when describing their contributions to that art. But that’s just normal “common sense” behaviour, isn’t it?’
Not with the new 102.
Under the new 102(a)(2), such behavior can and will apparently completely extinguishes the grace period of 35 USC 102(a)(1)(B), as to all prior art described within (or incorporated by reference into, I believe) the filed patent application.
1) You publish “subject matter” on June 1, 2008;
2) I read your publication and include the “subject matter” thereof into my patent application filed on July 1, 2008;
3) [Grace Period] You file your patent application on the “subject matter” on June 1, 2009, relying on grace period of 35 USC 102(a)(1)(B);
4) [First-to-File] PTO rejects your patent under 35 USC 102(a)(2) as being anticipated by my July 1, 2008 application (which I derived from your publication).
Apparently, you are right – GP doesn’t sit well with FTF.
Max, regarding grace period and FTF.
Your reasoning about independent dislcosures versus follow-on dislcosures is exactly why I say that FTF is really synonymous with absolute novelty. Unless you have absolute novelty, FTF doesn’t “streamline” anything. It just changes the argument and increases their frequency to the detriment of small inventors with limited resources.
And really, once the US has FTF, how long do you think it would take to “harmonize” the grace period? It would be declared a “loophole” the day after it became law.
Sorry RA, I’m not good at formulating a business strategy, and have no clue how to work new 102. No idea what I’m to say in answer to your question. But you’re right that the strategy you outline is devious. Far too devious for me. You surmise that, henceforth, Applicants will invoke the prior art, when describing their contributions to that art. But that’s just normal “common sense” behaviour, isn’t it?
“Which are knock-ons and which are independents?”
P.S. The new 35 USC 102 apparently treats them all as knock-ons (stateside, we call them “knock-offs” though).
O.K. Max, how’s this for a business strategy under the new 35 USC 102 (for American companies or NPEs who are uninterested in foreign filing but who want to keep their options open and who want to delay the exclusive right period as long as possible to maximize possible royalties)?
1) Draft patent application : June 1, 2008
2) Publish patent application : June 1, 2008
3) File application as Provisional Application : June 1, 2009
4) File application as Utility application : June 1, 2010
The only way a competitor could stop you is by filing a intervening U.S. patent application (between June 2, 2008 and May 31, 2009) that incorporates your published invention. But of course (due to your prior publication) that competitor’s intervening application could not claim your published invention, so why would they file it without knowing your devious strategy?
Which means to say that perhaps risk-averse companies will start filing patent applications which disclose (or incorporate by reference) their competitors publications for this very reason.
Max makes sense!
RA: here’s my stab at it:
Consequence of a grace period (GP) is that inventor can disclose with impunity, prior to filing. Disclosee then whispers further. All sorts of disclosures then happen, prior to the filing date. Are they to deprive Inventor of his rightful patent? Presumably not. So, you have to shut out of the definition of the prior art all those knock-on disclosures. Which are knock-ons and which are independents? What a nightmare to resolve. Salivating US patent law firms, greedy for more hours to bill, can’t wait for implementation of FTF + GP. Take it from me, GP doesn’t sit well with FTF. Best stay as you are, with FTI.
“Do earlier disclosures take later disclosures out of the prior art?”
Yes, apparently early disclosures made or derived from the inventor will take all later disclosures out of the prior art (as to the same subject matter). Hmmm…
Can anyone fathom a guess as to what the “exception” in 35 USC 102(b)(1) PRIOR INVENTOR DISCLOSURE EXCEPTION is intended to cover? I can make absolutely no logical sense of it. Do earlier disclosures take later disclosures out of the prior art?
35 USC 102(a) A patent for a claimed invention may not be obtained if–
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public–
(A) more than 1 year before the effective filing date of the claimed invention; or
(B) 1 year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
35 USC 102(b)(1) PRIOR INVENTOR DISCLOSURE EXCEPTION- Subject matter that would otherwise qualify as prior art based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
2) DERIVATION, PRIOR DISCLOSURE, AND COMMON ASSIGNMENT EXCEPTIONS- Subject matter that would otherwise qualify as prior art only under subsection (a)(2), after taking into account the exception under paragraph (1), shall not be prior art to a claimed invention if
(A) the subject matter was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter had been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed, directly or indirectly, from the inventor or a joint inventor before the effective filing date of the application or patent set forth under subsection (a)(2); or
(C) the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
RA, you are quoting from EPC 1973. EPC 2000 came into force Dec 2007 and changed Art 54(3) but not to the detriment of aliens. Art. 54 EPC is novelty and Art 56 is non-obviousness. The elegance of these two Articles is this: anything obvious on the filing date of the claim is not patentable. Obviousness to be determined relative to the prior art universe available to “the public” as of that date. End of story, no? Just deny patents to anything obvious? Nothing more need be done, or?
Except that only the first in the queue of rival filers should get a patent. So, use Art 54, the “novelty” tool, to confine the scope of the claims of each of the later filers to that which is novel over the whole contents of the app from the first filer. With A publications (or WO) that’s child’s play. First filer gets all he disclosed; later filers get the extent to which they delivered novelty over the first filing, and nothing more. Done. Fair, no? And dead easy. Not many billable hours there then.
We Europeans follow your arcane arguments over 102 and 103 with bemused puzzlement. Why be so hard on yourselves?
Americans are good at standing on the shoulders of pioneers. Why not stand on the shoulders of the drafters of the EPC, who also came from England (as well as from the civil law world of mainland Europe, Japan, China and ROW)?
“RA, I will correct you, if I may, because you are wrong.”
Thank you, Max. I believe you are correct regarding both Europe and Japan. It seems to me (now) that (perhaps) only the U.S. tilts the novelty requirement (in our 35 USC 102(e)) in favor of domestic filings vis-a-vis Paris-convention filings.
Europe: EPC Article 54 Novelty apparently reads:
(1) An invention shall be considered to be new if it does not form part of the state of the art.
…
(3) Additionally, the content of European patent applications as filed, of which the dates of filing are prior to the date referred to in paragraph 2 and which were published under Article 93 on or after that date, shall be considered as comprised in the state of the art.
(4) Paragraph 3 shall be applied only in so far as a Contracting State designated in respect of the later application, was also designated in respect of the earlier application as published….
EPC Article 89 Effect of priority right
The right of priority shall have the effect that the date of priority shall count as the date of filing of the European patent application for the purposes of Article 54, paragraphs 2 and 3, and Article 60, paragraph 2.
Japan: JPL Section 29bis apparently reads:
Where an invention claimed in a patent application is identical with an invention or device … disclosed in the specification or drawings originally attached to the request of another application for a patent …, a patent shall not be granted for the invention notwithstanding Section 29(1)….
from link to jpo.go.jp
“In the case where another application is one with a priority claim under the Paris Convention, and filed within the priority period and accompanied by a priority document, it is deemed as filed in Japan on the filing date of filing in the country of origin, for an invention commonly disclosed in the specification, etc. of the original application and in a specification and drawings originally attached to the request in Japan….”
Herr Max,
Re: “Small inventors awake. FTI is a lawyers’ conspiracy against your interests.”
In “Faust,” Johann Wolfgang Goethe wrote:
“A man sees in the world what he carries in his heart.”
“You know that “evidence” standard JD is always throwing around, it’s kind of hard for most of your clients to meet that.”
And exactly how many clients have you represented in your awesome time in this field that qualifies you to reach that conclusion?
Let me guess: NONE.
‘Sadly, many “professionals” fail to report such studies to their clients when they recommend spending money on such declarations.’
Like you Malcolm, I shudder to think of such horrible creatures walking the same earth as the rest of us upstanding folks.
😉
European readers, here’s another thought, why US patent attorneys are uneasy about FTF. As you know, a junior party can win an Interference, but only when he was “diligent” (he worked on his invention every day, from conception to PTO filing).
Consider Smallman, just after he has lost a priority contest. “Why did we lose?” he asks. “They said you weren’t diligent” comes the reply. Attorney off the hook.
Now, fast forward to FTF. Same question, different answer: “Because your patent attorney wasn’t diligent”. Attorney on the hook. Now we see why US patent attorneys are apprehensive.
Imagine everyday life inside the corporation. Joe says: “Boss, we don’t have to worry about this patent because we made their invention well before the other lot filed their app”. Boss: “Good Joe, but can you find out now when the other lot made their invention?”. People say their aren’t many interferences declared. OK, but how many thousand undeclared potential interferences are there, that consume hours and hours and hours of attorney time inside the corporation, of which independent inventors in the outside world are blissfully unaware?
Small inventors awake. FTI is a lawyers’ conspiracy against your interests.
European readers would do well to think what it must be like for a US patent attorney to watch a FTF Bill going through Congress. It was scary enough for patent attorneys in European countries, when the European Patent Convention came in. No country in Europe escaped without having to change its laws. Example UK. Jumping from “prior claiming” to “whole contents”, losing protection for publishing during the Paris year what’s in the prio doc, contributory infringement in, etc etc. But these are TRIVIAL compared with what US patent attorneys are now staring at. No wonder they are like rabbits in the headlights, and clutching at any straw to beat off the coming terror. EXPERIENCE shows however that once you’re through the experience of a new Statute, the patent system will still be there, corporate juggernauts will still be juggernauting all over the place, and small inventors will still be getting cracking patents on great ideas, to get rich off of. It would take a lot more than little ol’ FTF to knock USA off its stride along the path of innovation. But FTF (as in EPC) does make things an awful lot simpler. Far less hours to bill. Prosecution through the PTO arrives, that really does deserve the description “streamlined”. Could that be a worry, for some readers?
Studies have shown that those people who use the phrase “studies have shown” are just making it up.
Studies have shown that those people who use the phrase “studies have shown” are just making it up.
Dont forget that Dennis’ original premise was that FtF is not a controversial provision. Sorry Dennis, it seems that you might be a wee bit out of touch with what is considered controversial judging by the number of posts on this subject.
To EP and Max :
“Also Caveman, you have misunderstood Max. What he meant was that in the US, if you have strong IPR -> it follows that you can get investment. However, in Europe, strong IPR doesn’t necessarily lead to investment (frustrating for clients when they are struggling to find the cash). This has nothing to do with a FtF vs FtI system – it has to do with attitudes to risk.”
The above is gobbledygook, you know, like the TSM test. Strong IPR doesn’t lead to investment in Europe because there is no such thing as strong IPR (and by the way I really h8te the term “IPR” it seems it was made up by middle management corporate weenies). It has everything to do with FtF, which in turn affects the risk. A small startup is heading down a tricky road in Europe or wherever else, if they expect to gain a foothold in a landscape devoid of opportunity due to giants’ filing on everything under the FtF rubric.
FtI places the focus on where it should be – invention. Not the mere act of filing.
“Meaning it excludes those 131 declarations that never saw litigation or that were in the file history but not contested.”
They’re apparently REALLY easy to contest, so I don’t know why someone would not contest it unless you went whole hog on the evidence in the 131 dec. They take a good amount of evidence to hold up, due diligence, reduction to practice etc, we went through all that in PTA but I don’t remember much of it, unlike my buds I haven’t seen even one 131 yet. Saw my first TD the other day (they filled in the wrong # on it too :(). You know that “evidence” standard JD is always throwing around, it’s kind of hard for most of your clients to meet that. My previous company really wanted us all to keep detailed notes and have them signed every few weeks for exactly that purpose, amongst other purposes as well I assume.
Mr. Morgan writes: “Furthermore, studies have shown that few Rule 131 declarations survive in litigation.”
If I understand this comment, this statistic covers only those Rule 131 declarations that were brought into issue in litigation, correct? Meaning it excludes those 131 declarations that never saw litigation or that were in the file history but not contested.
“studies have shown that few Rule 131 declarations survive in litigation”
Sadly, many “professionals” fail to report such studies to their clients when they recommend spending money on such declarations.
Way to go Dennis, you really unleashed a monster. We should force Congress to read this, so they understand the conflicts inherent in the legislation.
It’s nice to see non-US interests/practitioners in the discussion, with their perspectives and experience. However, I’m not convinced the recent motivations for this legislation come from abroad (harmonization), but more from the same local forces trying to contain the US Patent system that were promoting the recent rules changes (continuations/claims, and IDSs) and FEDCIR decisions.
I appreciate your comment about the legislation moving the critical date up to the filing date and PopeGideon’s Mar 18, 2008 at 07:04 PM comment about 102(a) art becoming 102(b) art. While I haven’t digested their full import, I appreciate hearing those thoughts (as well as the suggested retainer agreement language – hits home).
I am curious, tho, whether you have moderated some of those people posting comments, or if you have towed the line of a University Professor with full respect for those exercising their 1st Amendment rights to make fools of themselves. (In any case, great blog and keep up the good work.)
Well, you folks have been having fun since last I posted. I, for one, was diligently writing a patent application to get as early a filing date as possible.
One of you asked if I do take my time and if I just take the client’s money without warning them about the risks that the rest of the world is FTF. Of course I tell them, and let it be their choice. They can pay me extra to miss my kids soccer games and stay late on weekend nights to get them the earliest possible filing date.
Or I can do it in a more civilized fashion, going home for dinner with my family and church on Sunday and get the job done a few days later, knowing that the early drafts of my application and inventor’s disclosure can prove that my client is entitled to the patent, in those rare occasions when an interference is declared.
I note that the desire to change the US to FTF comes only from the foreign practicioners (6k doesn’t count), as well as the insults, while the US practicioners prefer the FTI and accompanying grace period.
EP, your hypothetical will always remain hypothetical. When a client first approaches you, you ask about past disclosures and planned disclosures of the invention. If there is a past disclosure, foreign filing is moot. If there has not been a dislcosure then you inform the client about absolute novelty and plan accordingly for any planned upcoming disclosure. Either way, you inform them of absolute novelty for future reference.
“And weren’t there 400k filings last year at the China PTO, nearly all of them by domestics?”
Just do an advanced search at Esp@cenet, putting in “cn not y” for Publication Number* and “2006” for Publication date (2007 is not fully updated yet), and you’ll see the foreign filings in China are beginning to rise sharply (perhaps 30% in 2006).
*y usually denotes “utility model”
Super link RA. Thanks. readers, it’s worth a click. The graphics are nice and it’s an eye-opener to see the USPTO mid-way between the EPO and the JPO, on the filing numbers. And weren’t there 400k filings last year at the China PTO, nearly all of them by domestics?
Fortunately I do have fingers, just not figures 🙂
67/33?
🙂
Actually RA, you should notice that only 53% of applications filed at the US are American.
This means 221, 754 were filed by a US applicant in 2006.
Also in 2006, US applicants filed ~51000 PCT applications (link to wipo.int )
then there are direct filings in other countries. Sadly I have no fingers, but I would have to estimate at least 10-20 000?
Thus, it seems likely that a third of applications from the US need to take into consideration FtF
Obvously some of the commentators still think that they can fully protect their clients from a delayed application filng under the present law by filing a Rule 131 (37 CFR 1.131) declaration “swearing behind” an earlier-filed application, on the further apparent theory that whatever any examiner will accept is OK. In reality, using a Rule 131 declartion to swear behind an earlier filing on the SAME INVENTION is expressly prohibited in that rule, and fraudulent. Futhermore, studies have shown that few Rule 131 declarations survive in litigation.
P.S. Max, you’re right in one respect, while only about 40,000 apps go from U.S. to EP, there are not 400,000 U.S. originating apps per year, so the percentage might be more like 80/20 (Mitt/EP).
Sorry my last comment came out twice. Not intended.
RA, I will correct you, if I may, because you are wrong. Who’s advising you on European patent law? They are incompetent. Fire them. Europe takes seriously its signature to the Paris Convention, but does the country with the Hilmer Doctrine?
Should I know about battery-less smoke detectors? Tell me the WO or A publn number and I’ll immediately read the whole EPO file online and reply to your mail on the basis of the file inspection.
You are reading too much into European law. Finding what you expect to find, perhaps?
Sorry, I don’t know what your terminal VAT means (unless it’s referring to EU value-added tax. Is that protectionist too?
US patent law favours its own because a foreign filing date doesn’t give the application a 102(e) date – only PCT and US filings do. Consequently, if I file my RoW application (e.g. UK, Europe) before the US applicant, but only file my US application (claiming priority) 12 months later, after the US applicant, then I will be junior party in the interference proceedings and have a huge disadvantage. (This is definitely a good reason to file a US provisional on the same day as your priority date).
However, in the RoW, the earliest filing date, WHEREEVER IT MAY BE (and provided it is within 12 months), is the most important factor in deciding who gets the invention. There is no advantage in filing the first application in Europe.
Clean, simple, legally certain and much much fairer. Indeed I wonder whether the US would be happy if the system was reversed…
“RA you surmise that only 40 thou out of 400 thou US inventions are taken into the EPO. How do you arrive at that figure?”
Max, are you really a European patent attorney?? (I do think you are.)
link to trilateral.net
RA you surmise that only 40 thou out of 400 thou US inventions are taken into the EPO. How do you arrive at that figure? Every time I have reason to look at a patent family, I see one or two filings in each country outside USA and multiple filings at the USPTO (con, cip, div etc). So, for scope of protection, one in the EPO is worth 5 or 10 at the USPTO. In the EPO, one gets to issue, in one patent, all of the product, process, apparatus and use claims that are needed, to protect all conceivable aspects of the inventive concept. So far, I just don’t believe you, that 90% of inventions protected at the USPTO are protected in USA alone. But maybe you can still convince me?
MaxDrei, correct me if I’m wrong, but European patent law is “nationality-neutral and residence-neutral” only if you live in Europe. To wit, if I file on a batteryless smoke detector in the U.S. on Jan. 2, 2006 and then file in Europe on Jan. 2, 2007 Paris-convention, and you file on the exact same thing in Europe on June 1, 2006, the EPO will not reject your [European] claims based on my U.S. priority date. Correct?
“Where are the protectionist provisions of the E[P]C, please? I’m interested. Seriously.”
VAT…
RA you surmise that only 40 thou out of 400 thou US inventions are taken into the EPO. How do you arrive at that figure? Every time I have reason to look at a patent family, I see one or two filings in each country outside USA and multiple filings at the USPTO (con, cip, div etc). So, for scope of protection, one in the EPO is worth 5 or 10 at the USPTO. In the EPO, one gets to issue, in one patent, all of the product, process, apparatus and use claims that are needed, to protect all conceivable aspects of the inventive concept. So far, I just don’t believe you, that 90% of inventions protected at the USPTO are protected in USA alone. But maybe you can still convince me?
Also,
Our country’s belief’s are not based upon the bible-based as much as the superstitious majority wish it were true.
Let’s be clear,
If you take your time perfecting your invention and crafting your application, you may be able to swear behind a reference and succeed in obtaining a patent. However, that patent will not hold up in court unless you can show diligence, which is not an easy hurdle to clear.
FTF is simpler easier and less costly for everyone (except for the independent patent attorney).
RA, don’t follow you. I know that US patent law favours the domestics, even after allowing conception dates outside USA, but where do you get the “analogously in Europe” from, pray. I had thought European patent law to be nationality-neutral and residence-neutral. Where are the protectionist provisions of the EPC, please? I’m interested. Seriously.
Or do you just “know” those protectionist provisions must be in there somewhere, either because ROW always takes its lead from the USA or because every nation with any common sense is protectionist?
EP,
Your insistence on insulting stupefies me.
You bend over backwards to find more and more insults.
What’s up with that?
EP,
You do.
What are you suggesting? The definitions I provided are straight from Merriam Webster’s Collegiate Dictionary.
Many words have multiple meanings — is it beyond your ability to glean the intended meaning for the context of my remarks?
First to file is great for the big guys: Microsoft, Pziers, etc. Guys who can drop a grand at the blink of an eye. This is not good for my clients — the little guys. Our country has been built on the ideas of small invetors. Where will this leave us — a country of monopolies where invetors will be given credit only if they are associated with a monopoly?
JAOI,
I know I shouldn’t get involved in tit for tat, but I can’t resist. Your smugness irritates somewhat:
American Heritage Dictionary –
“re·view (rĭ-vyōō’) Pronunciation Key
v. re·viewed, re·view·ing, re·views
v. tr.
1. To look over, study, or examine again.
2. To consider retrospectively; look back on.
3. To examine with an eye to criticism or correction: reviewed the research findings.
4. To write or give a critical report on (a new work or performance, for example).
5. Law To reexamine (an action or determination) judicially, especially in a higher court, in order to correct possible errors.
6. To subject to a formal inspection, especially a military inspection. ”
Now who looks silly…
Max,
Actually, EP’s comment is rather silly. EP doesn’t seem to know the difference between “reviewed” and “studied.” And he accuses me of being inconsistent. Frankly, you and he are not my cup of tea and I’d like to leave it at that.
* * * * *
EP,
I’d suggest you look up “reviewed” and “studied” but my guess is that you don’t have a dictionary or else you wouldn’t have made yourself look so foolish in the first place.
A “review” is by definition: “a general survey”
A “study” is by definition: “a careful examination or analysis of a phenomenon, development, or question”
You must not have known the meaning of these two words when you criticized me saying:
“That makes you pretty inconsistent.”
Now don’t you feel silly?, or do you still not see that my two remarks are perfectly consistent?
You then write: “Harmonisation isn’t always a bad thing – sometimes, although it hurts, you have to admit that everyone is doing it right and you’re doing it wrong.”
In general, I think “harmonization” sucks, that much is true. However, I did not say harmonization was “always a bad thing,” to the contrary, I said:
“Although most every aspect of something as sophisticated as intellectual property procedures has strengths and weaknesses; I have never thought first to file to be particularly problematic.”
I find you to be a bit ridiculous and shallow, and I don’t like it when you or Max or anyone else twists my words or tries to put their words into my mouth.
However, I am happy to agree with you about one thing: Yes, I have been wrong when others have been right, so what? I can and do admit that, but you my friend, and Max too, do not seem to have that quality, and that, if true, is a serious character flaw. But enough of this idle chit-chat (like throwing pearls before swine ;o).
I have been offensive to you because nothing I seem to say stops you from being insulting and wrong-minded.*
I’ll leave you with a suggestion you may want to consider – it came from the 1976 movie “The Shootist.” The memorable quote from terminally ill J. B. Books (played by John Wayne), the most celebrated shootist extant was:
“I won’t be wronged, I won’t be insulted, and
I won’t be laid a hand on.
I don’t do these things to other people, and
I require the same from them.”
* Proverbs 12:8 says: “A man will be praised in the measure of his wisdom, but a wrong-minded a man will be looked down on.”
Your first scenario happens perhaps 10%+ of the time (400,000 US apps, perhaps 40,000+ of those filed in EP). Mitt’s assumption is good almost 90% of the time, while yours is good 10%+ of the time….
Your second scenario: earlier filing date usually does not mean interference – it just means swearing behind a reference (Rule 131) – usually quite easy to do at the Examiner level.
Most nations have very domestically-biased patent laws (e.g. a filing in Europe is not prior art against a U.S. application, even if the European applicant later files Paris-convention in the U.S.; the analogous is true for EP and JP). We really don’t worry about concurrent foreign filings by competitors for this very reason – they don’t affect the validity of issued U.S. patents (plus foreign inventors are often afraid to publish, so we don’t have to worry about foreign inventor publications the way you have to worry about American inventor publications – perhaps win-win for us).
Regarding decent applications being prepared in ROW, ROW has tons more applications which are filed that are never examined (e.g. because they are found to be not-novel after filing). Perhaps those applications should not have been filed. 🙂
I’m not saying FTI is always better than FTF – each has some benefits.
RA,
I see two possibilities from the scenario described above:
In the first scenario, the clientis positive about foreign filing. This means that Mitt’s assertion that “you can rely on your early invention date, getting the case searched and prepared correctly before filing can be done without the pressure of concern that someone else can file ahead of you and take the whole pot” doesn’t apply because you might lose the filing date race in the RoW (As Max pointed out, 5 700 000 000 is a lot of people).
In the second scenario, the client may decide he’s not keen on foreign filing. This means, according to Mitt, you take your time and get the case searched and prepared correctly.
Whilst this may be fine, problems may arise if:
A. Someone gets an earlier filing date in the US. This means interference proceedings and ££££ for your client. Something I’m not sure they would be ecstatic about.
B. The client says, ‘things are going well, i want protection overseas too’, and your lack of speed means that he has been beaten to the filing date across the world. I think you’d probably need to investigate insurance at that stage…
So in scenario 2, like pascal’s bet (link to en.wikipedia.org), it is probably better to prepare as if it were a FtF case rather than if it were a FtI.
Also, as an aside, if the RoW can prepare decent specifications on a FtF system, I am sure US attorneys could adapt. Any agrument otherwise is an insult to your own intelligence
Real makes a good point. The US market is so big that individual inventors don’t want or need foreign protection. The priority of the US patent system is (as we all know from the hubbub) small inventors, not manufacturing industry. And it’s small inventors, isn’t it, and not established industry, that has made the US rich and will keep it rich. EP, you might wait a long time for news of the fate of the 55 patents.
Snag for FTI from now on is: those contemplating investing in US small inventors DO increasingly want foreign protection.
EP, good comment. Reminds me of the phenomemon of “ghost drivers” on the German Autobahn, oldsters driving the wrong way, by mistake. Quite terrifying. One old lady heard a radio warning and promptly phoned hubby on the GPS cellphone, while he was in the family car driving to the next town. “Watch out dear” she warned, There’s a Geisterfahrer on the A8. “One” he cried. “There are hundreds of them”.
“Would appreciate your answer to that question.”
EP, I think there’s a misunderstanding in how the question/hypo is laid out.
At the outset (when an inventor comes to an attorney), foreign filing must be discussed and considered (how else would an attorney decide whether the client is best served by a non-publication request?) At that time, should the possibility foreign filing not be unequivocally dismissed by the inventor, an attorney always discusses, both retrospectively and prospectively, the ROW concept of absolute novelty and the 1 year US grace period to determine what absolute bars may exist or need to be averted (“Don’t disclose this publicly if you want to file in Europe.”) I don’t think the hypo can occur if the attorney is steering clear of malpractice….
Ah Mitt Romney, that old illusory comfort blanket “getting the case searched and prepared correctly before filing”. How many of the filings of others, made in the 18 month “black hole” between filing and 18 month A publication, do you pick up then, in your “correct” pre-filing searches? How much of what the EPO is going to find are you going to find in your “correct” pre-filing searches then? You make me suspect now, that FTI is a conspiracy amongst patent attorneys, to justify fleecing private inventors out of $$$ by telling them that, now that the thing has been searched “correctly”, an issued patent with punchy claims is a dead cert, so all the cost of a “correct” jumbo filing is a wise decision.
JAOI,
First you said: “Back to business: Having reviewed the above 142 comment comments”
Now you say: “Heretofore I’ve made no comment regarding first to file, nor have I studied all the appertaining comments in this thread.”
That makes you pretty inconsistent.
Also you say: “However, I say: If it isn’t broke, don’t fix it.”
Well, that’s the discussion some of us are trying to have on this board. FtI is broken (in particular see my quote above) and that’s why it needs to be fixed.
Harmonisation isn’t always a bad thing – sometimes, although it hurts, you have to admit that everyone is doing it right and you’re doing it wrong.
Dear EP,
You ask, “JAOI are you a weekend hobbyist?”
No, I am not a “weekend hobbyist.” Although I wear many hats in the course of a typical 100 hour work-week, I have considered myself a full-time inventor for over thirty years. Before that, I was ashamed to call myself an inventor because I thought people would think me (i.e., all inventors) a bit daft. I finally came to understand under the tutelage of a renowned British inventor (and he was also knighted) that inventing is an honorable profession. I have well over 20 assorted patents issued and pending here and abroad, some of which are “jumbos” in the U.S. and comprise over a dozen inventions each according to EP standards. I love inventing, and it tears me up to see the strong American patent system systematically dismantled.
I’ve invented a wide variety of things, from extremely simple things to really complex (like complex circuitry and error control coding algorithms). I’ve found that some of the simplest things can be the most elusive and obscure — missed by myriad millions of people for centuries — those are my favorite inventions. By my contributing to society what others missed seeing, I feel a warm sense of self-worth.
Heretofore I’ve made no comment regarding first to file, nor have I studied all the appertaining comments in this thread. However, I say: If it isn’t broke, don’t fix it.
When things change, there are often unforeseen consequences. I believe in maintaining the status quo. Although most every aspect of something as sophisticated as intellectual property procedures has strengths and weaknesses; I have never thought first to file to be particularly problematic.
Moreover, I am passionate about what seems to underlie this thread’s “Moving First to File” subject: “Harmonization.” I dam n sure ha te harmonization:
I pride myself in being uniquely “me” and
I take pride in my country being uniquely Number One,
all of to which “harmonization” is the anathema.
Regarding some of my dialogue in this thread above, I have nothing against foreigners or anyone else for that matter, but when someone makes a calumnious remark about my country, I tend to speak out loudly and proudly—in part, I speak so to get noticed because I think I have something to say (whether I do or not is for others to sort out if they are inclined to do so).
In case it may be of interest, here’s one more thing: After I found out about CISCO SYSTEMS Inc.’s now defunct “Patent Troll Tracker” blog making calumnious remarks anonymously for years about self-employed independent inventors in order to further its greed-at-all-cost anti-American patent system agenda, boy, that really ticked me off. It made think “I’m mad as hell, and I’m not going to take it anymore,” a line made famous in the 1976 movie “Network” which is discussed at some length in my comment in this link.
link to patentlyo.com
Mitt,
I quote from Normski above:
“So what happens when your client invents something, you take your time drafting the app and he discloses his invention in the meantime. You then file a US app. 12 months later he says, ‘things are going well, i want protection overseas too’.
What do you say? Do you tell him that in most of the ROW any app/patent will be invalid? Do you just file anyway and take his $$?”
Would appreciate your answer to that question.
6k,
Still with you. A little busy for posting, though I am enjoying you getting PWNT by pds, JD, et al.
Please keep entertaining us.
VA