Moving to First-to-File

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:

  1. Encourages inventors to quickly file for patent rights;
  2. We avoid the potential for fraud in swearing-behind references;
  3. Interferences are gone (but derivation litigation is in);
  4. A patent would be more difficult to obtain – especially when the invention is easily conceived by another; and
  5. Global harmony .

232 thoughts on “Moving to First-to-File

  1. 231

    “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.

  2. 230

    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.

  3. 229

    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’!”

  4. 228

    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.

  5. 227

    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.

  6. 226

    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.

  7. 225

    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?

  8. 224

    “… If they were all to disappear, I can imagine it having an aggregate positive effect on the US economy.”

    It would certainly be quieter.

  9. 223

    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

  10. 222

    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’!”

  11. 221

    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.

  12. 220

    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?

  13. 219

    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.

  14. 217

    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.

  15. 216

    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.

  16. 215

    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?

  17. 214

    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.

  18. 213

    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.

  19. 212

    “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.

  20. 211

    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).

  21. 210

    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?

  22. 209

    “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….

  23. 208

    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.

  24. 207

    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.

  25. 206

    ‘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.

  26. 205

    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.

  27. 204

    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?

  28. 203

    “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).

  29. 202

    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.

  30. 200

    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.

  31. 199

    “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…

  32. 198

    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.

  33. 197

    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)?

  34. 196

    “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….”

  35. 195

    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.”

  36. 194

    “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.

  37. 193

    ‘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.

    ;-)

  38. 192

    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.

  39. 191

    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?

  40. 190

    Studies have shown that those people who use the phrase “studies have shown” are just making it up.

  41. 189

    Studies have shown that those people who use the phrase “studies have shown” are just making it up.

  42. 188

    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.

  43. 187

    “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.

  44. 186

    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.

  45. 185

    “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.

  46. 184

    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.)

  47. 183

    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.

  48. 182

    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.

  49. 181

    “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”

  50. 180

    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?

  51. 177

    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

  52. 176

    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.

  53. 175

    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).

  54. 174

    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?

  55. 173

    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…

  56. 172

    “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

  57. 171

    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?

  58. 170

    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…

  59. 169

    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?

  60. 168

    Also,

    Our country’s belief’s are not based upon the bible-based as much as the superstitious majority wish it were true.

  61. 167

    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).

  62. 166

    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?

  63. 165

    EP,

    Your insistence on insulting stupefies me.

    You bend over backwards to find more and more insults.

    What’s up with that?

  64. 164

    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?

  65. 163

    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?

  66. 162

    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…

  67. 161

    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.”

  68. 160

    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.

  69. 159

    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

  70. 158

    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.

  71. 157

    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”.

  72. 156

    “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….

  73. 155

    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.

  74. 154

    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.

  75. 153

    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

  76. 152

    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.

  77. 151

    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

  78. 150

    It is not the 55 cases a year that are important. It is the overall approach that inventors and attorneys take to ALL CASES where foreign filing is not a foregone conclusion. Since 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.

  79. 149

    Sir or Madman, your comment is lost on me. As the readership is extensive, and international, I might not be the only one to struggle. So, may I ask, is your comment a heartfelt defence of FTI or is it perhaps sarcastic, by which I mean a slur on Republican schemes to suggest that poor children in USA not only enjoy a high-flown inalienable right to “pursue” happiness, but also a more basic thing, namely a fair chance in life. Europe might be sclerotic but poor children there have a considerable compensation, in a statistically higher chance of ending up rich than poor kids in ultra-competitive USA.

    I’m asking myself, are those 0.03% of American inventors important enough to justify the FTI drag on the other 99.97% of that incredibly valuable species?

    Fun isn’t it, this blog.

  80. 148

    “In only about 55 cases annually has the party that was second-to-file been determined to have been the first-toinvent”

    So there are roughly 550 patents that have been granted to the first-to-invent in the US in the last 10 years.

    I would be interested to know who owns these patents, the technological and economical significance of these patents, and whether they’re still alive. I think the results of such a study would have an important bearing on this discussion (Dennis, fancy looking into it?).

    The question essentially boils down to whether these 550 patents are the difference between America’s innovation and entrepreneurship and the RoW?

    Somehow I doubt it….

  81. 147

    Thanks EP. Caveman the paradox is that FTF does actually give entrepreneurs more “effective” IPR than FTI yet, nevertheless, European entrepreneurs still struggle to secure the needed 6 figure investors. It might be paradoxical, but the cultural explanation is clear, and it’s f-all to do with FTI. How does the old Yorkshire folk wisdom go “There’s none so blind as them as will not see”.

    European countries have been searching for most of the 20th century for ways to encourage entrepreneurship, all the while lamenting “Why can’t we be more like the Americans”. Although most everything under the sun has been suggested, nobody has put forward your simple instant FTI solution. Anybody with serious professional experience of both FTI and FTF knows why. As I said above, and as EP explains above, US entrepreneurial success is despite FTI, not because of it.

  82. 146

    “Thus, the U.S. persists in this complex, costly, and idiosyncratic system in order to reverse the priority of 0.03% of the patent applications filed each year.”

    No inventor left behind…

  83. 145

    In answer to my question:

    link to ftc.gov

    I found this quote interesting…I know I shouldn’t (but I can’t resist), JAOI are you a weekend hobbyist?

    “A frequently invoked argument for the first-to-invent system is that this provides protection for small inventors, who may take longer to translate a discovery into a completed patent application.

    While this argument is initially compelling, the reality is quite different. Disputes over priority of invention are resolved through a proceeding before the USPTO’s Board of Patent Appeals and Interferences known as an interference. The Board will hold a hearing to determine which inventor first made the discovery.

    The interference process has been characterized as “an archaic procedure, replete with traps for the unwary” [Calvert, 1980]. These interferences consume a considerable amount of resources: the adjudication of the average interference is estimated to cost over one hundred thousand dollars [Kingston, 1992]. Yet in recent years, in only about 55 cases annually has the party that was second-to-file been determined to have been the first-toinvent [Calvert and Sofocleous, 1992]. Thus, the U.S. persists in this complex, costly, and idiosyncratic system in order to reverse the priority of 0.03% of the patent applications filed each year.

    While the voices raised in protest over his initiative—as those opposing earlier reform attempts—were led by advocates for small inventors, it is difficult not to conclude that the greatest beneficiary from the first-to-invent system is the small subset of the patent bar that specializes in interference law.

    It may be thought puzzling that independent inventors, who are generally unable to afford costly litigation, have been so active in supporting the retention of first-toinvent. A frequently voiced complaint is that small inventors take longer to prepare patent applications, and hence would lose out to better- financed rivals, in a first-to-file world.

    This argument appears to be specious for several reasons. First, economically important discoveries are typically the subject of patent filings in a number of countries. Thus, there is already an enormous pressure to file quickly. Second, the recent reforms of the U.S. system have created a new provisional patent application, which is much simpler to file than a full-fledged application. Finally, as former Commissioner Lehman notes, many most vocal independent inventors opposing patent reform are “weekend hobbyists. . . [rather than representatives of] knowledge-based industries” [Chartrand, 1995].”

  84. 144

    I think Max hit the nail on the head when he said:

    “European inventors struggle to find investors, not effective IPR. The attitude to risk is bolder in USA (perhaps to the disadvantage of old Europe)”

    As a research analyst (before entering the patent profession), I was part of a team that investigated entrepreneurship on behalf of the UK Treasury. The report found that people’s fear of failure and people’s fear of what others would think of them if they failed was much stronger in the UK than in the US – I guess we don’t have the American dream. This is one of a number of complex factors that gives rise to America’s place as “the land of opportunity” – so please don’t try to boil it down to FtI.

    As I requested earlier, I would be grateful to see a list of patents that were filed by small inventors in the last 10-20 years that were ground-breaking/highly profitable and the difference in number between the US and the RoW.

    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.

    In addition, if we played out your scenario (Start-up vs Megasoft) in the US (as I understand it, but please forgive me if I am not entirely correct), the Start-up would have to go to interference proceedings. This costs $$$$ and is only fair if the start-up/small inventor has the money to pursue his dream – so in reality the system favours the wealthy. Further, the Start-up would be the Junior pary which would give it a much lower chance of succeeding.

    Again, in the interest of having a factual discussion, could any US attorney provide details on the number of intereference proceedings that are won by Junior parties per year and average cost? I think this number would give us an idea of what the US would lose if they moved to FtF.

    In my opinion, the main advantage of FtF is legal certainty. This can act in favour of the small inventor, who knows that once he files first, there is nothing the big company can do to steal his patent (compare with the US, where the big compnay could start interference proceedings). FtF rewards the person who discloses first (see my comments and Gayle v Wilder supra).

  85. 143

    Back to business: Having reviewed the above 142 comment comments, I vote the Top Prize for the Best Comment of the Thread to Peter Hoffman. Here is a link to his comment, followed by his comment which I have taken the liberty to break into paragraphs (for emphasis) and add two question marks.

    link to patentlyo.com

    “All this talk about what the rest of the world does is bogus.

    Most of the patent laws in PCT countries are carbon copies of the French/German systems which were formulated to protect domestic industries with no consideration of awarding a patent to the individual inventor which is uniquely American and completely alien to all other countries.

    The German patent law which still has cartel protective stipulations going back to the Third Reich served as a model to the European patent law which in turn was copied into Chinese and Japanese patent law.

    An ironic situation develops as we harmonize with Hit ler. Why would we give up on the best protection of the individual rights in favor of fascist companies and countries? We are the place where the rest of the world in order to succeed has to sell at least 40% of their production be it cars, drugs, or anything. Why would we kill off the only decent protection an individual (not only American by the way!) can get to build and contribute?

    Patents should not be a tool of the government to control and manipulate for social engineering. If we do not keep our way of life in favor of a change to cartellism and mass then we are obviously sliding into the rule by unelected commissions and the so-called international law, mostly inimical to our system of laws.

    Incidentally, foreign inventors have also thrived under our system.
    After winning all those wars, we are now ashamed of winning and leading. What a perversity.”

    Posted by: Peter Hoffmann | Mar 19, 2008 at 11:23 AM

    * * * * *

    These links win no prizes but (if I may be so immodest to re-introduce my own comments) I like them nonetheless, and with 142 comments to date, I’d ha te to think any interested parties missed them:

    link to patentlyo.com

    link to patentlyo.com

  86. 142

    Just a sidenote, I stand corrected. BMW made aircraft motors in 1917 well before WWII that were instrumental in breaking the world altitude record of the day (32,000 feet). With an inline 6 no less.

  87. 141

    Sorry Max, now your point and your logic are escaping me.

    “European inventors struggle to find investors, not effective IPR”

    In America, inventors won’t get investors UNLESS they have effective IPR. If a FtF giant scooped up the sector already (and most likely is NOT producing in it) then I guess the start-up is out of luck even if they had a working prototype a year and a half before Mega-soft (or was it Initrode) filed.

  88. 140

    Dear Leopold:

    I know how you must feel, pretty low, I understand. It bothers you to have misspoken and embarrass yourself as you did.

    Here’s the thing: I forgive you, I totally do, no hard feelings. In the heat of the moment, you made a mistake. That’s all.

    You may feel better if you make an apology, nothing fancy; for example, a simple, “You are right, I misspoke, sorry.” An apology will put you on the top of you game again. I will not take any apology you may tender as an endorsement of my passionate patriotism, merely you doing the right thing.

    You’ll want to thank me later.

  89. 139

    Dear Max,

    Will you never cease to amaze me? You endorsed examiner#6k, most remarkable!, too funny. Proving the adage, “birds of a feather flock together.”

    You actually wrote, and this is verbatim:
    “I think he’s a credit to his employer. The PTO needs bright and energetic workers (like 6K?), thousands of them”

    You also wrote:
    “… loquacious people to sound off. And thanks Exr#&K for being so provocative.”

    “loquacious”?, “provocative”? Max, smell the coffee— #6K is off his meds, way off.

    Pathetic Max, have you checked lately, are you playing with a full deck?

    (I should talk; I do play with a full deck, but including the Jokers ;o).

  90. 138

    Dennis, again congratulations on providing a forum for loquacious people to sound off. And thanks Exr#&K for being so provocative. Those rising to the bait should reflect a moment, that speech in reaction to provocation often reveals more about the character of the speaker than of the provocateur. 6K has problems with attorneys. Anybody reading this blog can guess how his typical day goes by. It’s certainly not my idea of life as a sleepy time-serving Government employee. I think he’s a credit to his employer. The PTO needs bright and energetic workers (like 6K?), thousands of them, with an appetite for work and a motivation to improve their performance. The blog also reveals how examination at the EPO is startlingly more efficient and consistent than at the USPTO. Before anybody quotes statistics, please factor in to them that all examination in the EPO is done by a team of three. Look at any grant or refusal decision. Three signatures.

  91. 137

    I concede, Caveman, I missed your “point”, that FTI nurtures start-ups and FTF old-established industrial juggernauts. That’s because, from here, your logic is absent. “That animal has a tail. Dogs have tails. Ergo,that animal is a dog.” Entrepreneurs succeed in “The Land of Endless Opportunity” despite its FTI and not because of it. We should ask people like James Dyson of vacuum cleaner fame, who started from nothing, just a few years ago. He has been embroiled in patent disputes all over Europe and, more recently, in North America. You might not enjoy being on the receiving end of his ascerbic remarks. Then there’s millionaire retired inventor Ron Hickman, inventor of the Black & Decker WORKMATE. European inventors struggle to find investors, not effective IPR. The attitude to risk is bolder in USA (perhaps to the disadvantage of old Europe), but that culture would have arisen anyway, even if the Framers had decreed that We the People should enjoy the happiness of a FTF system.

  92. 136

    Oh, and btw, it’s 14th amendment, I didn’t read that very well hah, time to do my hw on the constitutional arguments, I’m going to give that guy a call and see if he had put anything together. And also see if he knew they amended the laws just to take care of his case. It seems the Gen Assembly around here is just loving discriminating against people who live on private property that they’re renting just because, hmmm, just because, well, no reason, they just feel like they should. And they feel that people living there are poor enough and have little enough power to challenge them. I say if the state is going to take away my gd private parking space as being private property and make it a public “highway”, for law enforcement purposes, then your driveway at your house goes as a public “highway”, for law enforcement purposes, too. Even though obviously the public didn’t have anything to do with it’s construction and are largely regulated from parking or otherwise using it as a public way other than occasional visits to residents (maybe not even that). To do otherwise does indeed seem to “deny [a] any person within its jurisdiction the equal protection of the laws.”

  93. 135

    “I can’t wait to hear what he has to say about the Fed. Cir.’s recent ruling on the safe harbor provisions of 271(e)(1) in the latest post.”

    Nah, I don’t have much to say about it, seems fine with me, and the dissent was fine too, it’s a greyish area according to the legislation on the matter so is completely up to the courts. If I read it correctly it just meant that they interpreted the safeharbor provision as saying you can import things made by a patented process without infringing the patent. Knowing only what I do about method claims, it seems a very reasonable interpretation. No big news here, the courts made a resonable interpretation of a vague statute. In essence yes, this was “lawyer bs” but thankfully it was lawyer bs cutting through previous lawyer bs, which is usually a good thing.

    Newsflash JD, just because you’re too dense to understand what I say doesn’t mean it wasn’t stated properly. Just like half of your lawyer buddies it takes writting FINAL at the bottom of your action in order for you to grasp simple english or see simple concepts in references. Though I will admit I just jot crp down on here every now and again, as I’ve said before, I’m not getting paid to write it down eloquently for you, and I don’t have years of practice at writting flowery just yet. If what I write is that much of a burden to understand, then disregard it. Though, it would be my opinion that you’re being disingenuous when you say that it’s that difficult. You’re just butthurt like ol VA was at getting pwnt so you resort to personal attacks just like he did before he trailed off into not posting anymore. You’re probably still fuming over the Off. notice thing from before where you couldn’t make a convincing response lol. I’m going to be the bigger man and not return them right atm though, I’ve got some parking citations from sometime last year to sift through, it appears that someone appealed on the same grounds I was going to about a year before I did and the General Assembly passed some amendments to tighten up the laws, which frankly is bogus, they’re pretty big changes and nobody notified anyone about these substantial changes to the law that I heard about. In any case, I’m trying to figure out if they changed the law before or after I got the citation, and whether or not I should appeal as the other guy was planning to on a constitutional 4th amendment right. Interesting reading for those interested in the parking laws you lived under in VA:

    link to courts.state.va.us

    And btw, the laws have since been changed to accomodate such language. Now it’s time to appeal all the way up.

  94. 134

    I h8te to say that I have run into this sort of attitude from SPEs, the “well, I just don’t think this is patentable” argument. Its funny to hear seasoned Examiners (SPEs), who should know better, let such garbage past their lips.

    Funny thing, I can’t seem to find that legal standard anywhere in the MPEP, 35 U.S.C. or 37 C.F.R. As you indicate, such an approach seldom withstands heightened scrutiny, but can needlessly tie you up. Nice to have a good client in such a situation. When the OAs and the art start to pile up, fill the record with remarks related to application of cumulative art and unnecessarily prolonging prosecution on the part of the Examiner. Also, when you get a comment like that put it in the record as part of Applicant’s summary of the Examiner Interview.

    And call me in the morning.

  95. 133

    JD

    I had one junior examiner tell me a couple of years ago that his/her SPE told him/her that despite the fact that they didn’t have any good art the application was not to be allowed because the SPE thought that the invention did not merit being patented. Since then the patent office has thrown all sorts of junk art at us, a final rejection was withdrawn after a Pre-Appeal brief, followed by another OA with more junk art. Fortunately I have a patient and understanding client.

  96. 132

    coast,

    Glad I could bring a smile into the world.

    That scenario was “loosely” based on several examiners I know.

    JD

  97. 131

    “Even if someone gets away by a 103 exclusion they typically run smack into a 10 second word search on google or EAST for a 102a or b 103 substitution base.”

    Uhm, you’re supposed to do that “10 second word search” before you issue your first OA. Not after applicant responds.

    Did you miss that day in PTA too?

    “Frankly I’m surprised I was caught off gaurd by this one”

    I’m not.

  98. 130

    “I understand why assignment exists, and I also understand why I think it’s gone too far in in terms of strict constitutional (or even statutory) legality in these types of cases.”

    Huh?

    Clearly you don’t understand much.

    “examiner#6k

    You would be much more persuasive if you were less obnoxious.”

    No he wouldn’t. He doesn’t have any idea what he’s talking about. He writes like every engineering grad. Terribly. Most of his posts are incoherent babbling. But that’s what makes him so funny.

    I can’t wait to hear what he has to say about the Fed. Cir.’s recent ruling on the safe harbor provisions of 271(e)(1) in the latest post.

    Let me guess, it’ll be something along the lines of, “lawyer bs.”

    Or something like this, “The discombobulation of the obfuscation of the de jure safe harbor by the court is a clear panacea to all the de facto accused infringinators that are relying on the ramifications of said doctrinal masticulation.”

    He’s a riot!

    LOL

  99. 128

    Oh, and don’t get me started on “Waaaa, I need deps to have a valid claim after someone strikes down my ind.” LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL stop using the PTO as a crutch lazy arse.

  100. 127

    “You clearly have no clue what the role of dependent claims are.”

    Hardly, I know what they’re for, there are a couple of rationals for them existing and what their roles are Supposed to be. And I know how they’re used in many apps in manners that only support the “hur, I ned a dep claim so that litigators can’t say I didn’t mean that by “a wheel” I was referring to a “round wheel” as in my drawings and spec” kind of rational for having them. The “layers” bs rational doesn’t even apply when they’re claiming a bicycle that comes equipped with a warp drive in the ind. and it having round wheels, wheels made from rubber, a frame made from aluminum etc. in the deps. All in all, I see VASTLY more bicycle/warp drives ind. that have round wheel deps. than I do bicycle/warp drives ind. that have wherein the warp drive is comprised of an antimatter chamber that reacts H antimatter with H (i.e. something that’s further “inventive” about the application). This may also be why I so rarely indicated allowable subject matter in deps a case where the ind. is rejected, because all the deps are nothing more than obvious variations of x or y features in the ind..

    Deps are fkin retarded, and the admin is finally waking up to it. I’m surprised they put up with it until now.

  101. 126

    With a FTF system I see the quality of patent application disclosures decreasing.

    I also see disputes (litigation) over whether the quickly filed provisional application provides 112 support for the invention.

    And as mentioned in a posting above, I see malpractice rates increasing.

  102. 125

    Max says:

    “…I think of global standards, and global leaders like Nokia and Samsung.”

    Fine examples but Nokia is an industrial conglomerate with roots back to 1865 – not that there is anything wrong with that. But you can hardly say they got there start in a garage in Mountain View. As for Samsung started in 1938.

    “…Are they all American underneath, or just flash designers of housings? I’m interested.”

    You’ve missed the point Max, which is that they are not recent startups that owe their success, at least in part, to a vigorous and vital patent system and private investment.

    “BMW, AUDI and Mercedes…”

    Not American, but are as old as the hills and intertwined with government and old money. I believe BMW made motors for the Messerschmidt series aircraft in WWII, hardly a recent upstart…

    The point is, FtF tends to favor established giants with institutional filing practices and tends to inhibit small startups from gaining a foothold.

  103. 124

    “If you see it MAY be the same assignee (it is usually evident pretty quickly) make the rejection for the 1st action, but ALSO make a back-up rejection (even if not as strong) with your next best prior art that can not so easily be overcome.”

    If I’m going to make the “backup” rejection I may as well count that for the “best art”, either the features are shown in a manner conducive to combination or they’re not. Motivation can come from anywhere, including, but not limited to a reference available under 102e only for a 103 involving two pieces of art avail under 102b or a. As to going final, I have it on pretty good authority now (several higher ups) that apparently unless I put something in my action on a dep that is complete horsemanure then if the rejection of the ind was good and he amends the ind. he’s getting a final if there is still more art to overcome or his amendment fails to overcome the original art. This isn’t per se my policy, this is just what we’re told to do and if I didn’t my primary would see that I didn’t and ask me why, after he flipped through my comic book action that is.

    Nice play JD, srsly. Although I have to agree with you that those are the stereotypes, the fact of the matter is that it doesn’t happen as much as you’d think anyway. Even if someone gets away by a 103 exclusion they typically run smack into a 10 second word search on google or EAST for a 102a or b 103 substitution base. Frankly I’m surprised I was caught off gaurd by this one as my strict aversion to even using 102(e) except as a last resort in either 102s or 103s has been in place for quite awhile now. The whole thing between FP and 103 exclusion just makes it not worth my time to bother with it unless it’s a last resort and I rarely use it lately.

    Though, let’s be clear on one thing LL, in my art there APPLENTY of art that’s only avail under 102e in a very lot of cases and lots of 103’s to be made using them. The only thing I’m bitching about is the whole “let the company off the hook for making a mere obvious improvement of a previous devices of theirs even if the two inventions were by two totally different people/groups of people” and the fact that they claim ownership date (or even ownership period) AFTER I make the rejection and that’s bull. The letting them off is counter to rewarding the “inventor” and rather rewards the “inventcorp” which is a load of bs, I’ve not seen anywhere in the constitution that allows for congress to promote the useful arts by providing for limited times exclusive rights to “inventcorps” it is to inventors (individuals or groups of individuals who did the inventing) only. I understand why assignment exists, and I also understand why I think it’s gone too far in in terms of strict constitutional (or even statutory) legality in these types of cases.

  104. 123

    JD

    There is a lot of truth in what you say. I actually smiled when I read your posting.

    “SPE/primary: Let me see this application. What??!!! This claims is way too incredibly broad!!!! It’s gonna be a bad patent owned by a troll!!! Go out and search again. And don’t come back until you have enough jigsaw pieces that we can cobble together to read on this!!!!!”

  105. 122

    “Unlike you JD these guys are 90% of the time interested in the ind. getting allowed and only that, dep’s are fine but they’re bs gravy in 99% of the time and they know it and treat them thus.”

    I’m interested in getting all of the claims allowed.

    “This being one of the prime reasons you hear me calling to get rid of the bs deps all the time, they’re just taking up my time.”

    You clearly have no clue what the role of dependent claims are.

    Just one more thing you are clueless about.

    “I doubt they specifically covered that rules as “rule 1.104c2 and instead just had a slide saying “heh, show the best art”, they do leave some for us to have to read and whatnot eventually.”

    I doubt it too.

  106. 121

    LL,

    Examiner should apply 102(e) art in 103(a) rejection if it’s proper. Never said that shouldn’t be done.

    When the applicant overcomes it, and there was no other rejection of record, examiner should allow.

    Let me give you a little insight into what really goes on in the PTO. Outside of your bright little corner, of course.

    Our scene opens in the office of SPE/primary.

    Cue lights.

    SPE/primary: Hhm, what’s this in my in-box? Oh, it’s an Office Action from my superstar GS-9. Let me give this my usual super thorough review. (Flips through OA like it’s one of those animated coloring books. You know those books where you flip the pages and the character appears to walk across the page?) Well, it doesn’t appear that anything is indicated to be allowable. Now that’s what I call quality. 96.5%!!!!! Whoo-hoo!!!!! Where’s my pen??!!! I gotta sign this masterpiece!!!!!!

    We switch to the attorney’s office. Puts down glass of bourbon and peruses OA.

    Attorney: This isn’t too difficult. This reference only qualifies under 102(e) and it’s used in all of the 103(a) rejections. I’ll certify it was commonly owned and move on to the next glass, er, I mean application.

    Cue to the attorney’s assistant who diligently hits all the keys necessary to file the response using the PTO’s billion dollar EFS.

    Three weeks later, the EFS filed response actually makes it into IFW and gets docketed to the examiner.

    8 bi-weeks later, on the following first Monday at about 11:50 AM, we’re back in the SPE/primary’s office.

    SSGS-9 (SuperStar GS-9): Gee boss, I gotta let this one go.

    SPE/primary: What???!!!! Why???!!!!

    SSGS-9: Well, the attorney responded that one of my references is no good. Talked aobut M, P, something or other, something about section 706 something or other, so I guess I gotta allow it.

    SPE/primary: Let me see this application. What??!!! This claims is way too incredibly broad!!!! It’s gonna be a bad patent owned by a troll!!! Go out and search again. And don’t come back until you have enough jigsaw pieces that we can cobble together to read on this!!!!!

    That scenario happens every single day at the PTO. Several hundred times.

  107. 120

    Oh, and lest I forget, the final part comes also from the fact that the ind (and thus the deps that were rejected under 103) was heavily amended.

    Oh and JD, you missed the part about why it’s crazy, the crazy part is that they make the claim of ownership not at the time of filing of the prior app, but later on while the prior app is pending, i.e. when I reject another of their apps using the previous app they get around to saying “oh no no no, we had an assignment agreement with the inventor way back when” in the prior application (but it wasn’t on any file anywhere except their own files). We still let them off with this bs and it doesn’t happen too rarely in some arts because the companies are somewhat specialized so a lot of art falls right under 103 exclusion.

    Hey but thanks for the citation of where the section of rules is I’ll bookmark it, good to see where it is without looking too hard. I doubt they specifically covered that rules as “rule 1.104c2 and instead just had a slide saying “heh, show the best art”, they do leave some for us to have to read and whatnot eventually.

    “The pertinence of each reference, if not apparent, must be clearly
    explained and each rejected claim specified.”

    “If not apparent” comes immediately to the forefront of my mind. And lets be clear, a reference in English is a good bit more the “best” than something I can’t even read is. It’s only after applicants wish to bs their way out of it does the foreign reference become especially the “best”. Again, thanks for the citation, but let’s be clear, my citation of the best art was a decision determined by me, and as always, nobody can gainsay it to any effect.

    Nah I haven’t been called out to the Director yet, one lady did complain about a restriction, but I talked it over with my boss later and determined it would be proper anyway, but I let her off because I knew it was going out as indeterminate anyway since the claim was written worse than a 5 yr old could do. Yay, chalk one up for her! Her 1 E6k 0. Later: Applications abandoned: Her: 1 E6k: 0. Hmmm, funny how that’ll work out.

    In any event, my primary tells me to go final and get a translation and apply the translation for the 103. So I guess we all win, and the bigcorp couldn’t care less anyway. Unlike you JD these guys are 90% of the time interested in the ind. getting allowed and only that, dep’s are fine but they’re bs gravy in 99% of the time and they know it and treat them thus. Occasionally there will be some small time pos invention where we’ll have a big deal made about a dep, but it’s pretty rare, usually the arguments to the dep’s are halfhearted, half of the time forgotten, “the dep claims 234 depend from claim 1 so since claim 1 is gtg then claims 234 are too by virtue of dependency”. They really could give a sht less, making a wiring scheme of copper or a lighting element from an LED is really not what they care about. This being one of the prime reasons you hear me calling to get rid of the bs deps all the time, they’re just taking up my time.

  108. 119

    Dear David French,

    Re a follow up to:
    “This also means that you can spike anyone else’s chances of getting a patent by making your invention “available to the public”. You don’t have to file a patent application to interfere with someone else’s patenting efforts.”

    As I recall, IBM made its “IBM Technical Disclosure Bulletins” freely available to the public, but only by request.

    Pretty tough standard, as I recall.

  109. 118

    Mr. French writes: “This also means that you can spike anyone else’s chances of getting a patent by making your invention “available to the public”. You don’t have to file a patent application to interfere with someone else’s patenting efforts.

    What does “available to the public” mean? Well that’s a big topic for another discussion.”

    I’d imagined it meant something similar to the sort of evidence one must present in an EP opposition. We’ve had two instances where our opposition was grounded not on a prior application, but on having a product (and concomitant literature) on the market before the patentee’s critical date.

  110. 117

    JD & 6K,

    Actually, you are BOTH wrong to come extent.

    1) It is NOT necessary to check the assignment prior to the 1st action, thought IT IS A GOOD IDEA. The reason for this is that the assignment info WILL NOT HAVE THE INFO WE NEED. (sorry for the caps, but no other way to emphasize things here, like underlines or bold AFAIK).

    The law states (as JD said above) “MPEP 706.07(a), which states, ‘When applying any 35 U.S.C. 102(e)/ 103 references against the claims of an application the examiner should anticipate that a statement averring common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e).'”

    The important parts (for this discussion) are “the examiner should anticipate” and “a statement averring common ownership AT THE TIME the invention was made”. Particularly ” AT THE TIME the invention was made”.

    The assignment database DOES NOT HAVE THIS available. At best, you have the assignment that is current and the assignment from the time of filing. Only the applicant can provide this info & they will normally only do it if necessary (no requirement to do so b4hand).

    JD, I do not know why you have a hard time understanding this (or arguing it just for fun?). It is very clear. The examiner MUST make the rejection initially and let the applicant/lawyer come in with the needed information/evidence if they are able to do so. There can not be an assumption by the examiner. Even if there is a current assignment for both the patent & application to the same assignee, the requirement is not yet met. Once they overcome the reference, then it MUST be dropped.

    Not making the rejection would be counter to the law. And you do want us to abide by the law? Right? ;)

    2) 6K. If they have overcome the reference, you CAN NOT maintain it & must withdraw the rejection. If you are using the WO doc, then make the rejection over that and just rely upon the US Patent for the initial translation (and get an official one while you wait for the 6 months for the response). Most of JD’s remarks about this are correct & I agree with him.

    While you do not have to check “every reference” for the assignment info, it is a good idea if you see similarities (common inventors, same law firms, application makes references to other cases from the same assignee, etc.)

    If you see it MAY be the same assignee (it is usually evident pretty quickly) make the rejection for the 1st action, but ALSO make a back-up rejection (even if not as strong) with your next best prior art that can not so easily be overcome. If you do not do this, you WILL have to make a 2NF when they just come in & KO you art. It is NOT an option & you are NOT just being kind. If you do that extra rej the 1st time, the 2nd should be final or allowance. Some extra time up front will save an awful lot of time at the back end where you get no counts.

    3) 6K, For your applications, in eDan you can just click on the “bib” tab & then the “assignment” info tab to get the assignment for your case (if there is any). For the reference, if it is not on the face of the patent, check it in PALM. There is a link there. However, for the vast majority of your cases & references, this is not even an issue, so why keep b1tch1n’?? :)

    thanks,

    LL

  111. 116

    Dear David French,

    Re: “This also means that you can spike anyone else’s chances of getting a patent by making your invention “available to the public”. You don’t have to file a patent application to interfere with someone else’s patenting efforts.”

    I believe that was exactly what IBM historically did and may still do via publishing “IBM Technical Disclosure Bulletins.”

    That was one way IBM thwarted potential patent infringement suits. Other, less scrupulous and recklessly run companies like Cisco Systems Inc. ran anonymous Patent Troll Tracker blogs in their effort to skirt the Lobbying Act and fraudulently lobby to chip away at the strong American patent system piece by piece. As I said previously:

    — Who can now deny that CISCO materially contributed to the major deconstruction of the American patent system in violation of the LOBBYING DISCLOSURE ACT OF 1995, and that CISCO should be held accountable to We the American People, and that that is a large part of why CISCO took down the blog after it was discovered who was anonymously operating that now-defunct blasphemous blog. —

  112. 115

    “I have an application that reads on a prior art ref (US pgpub). The art is available under 102e by it’s filing date, however it also claims to be a continuation of a PCT filed in Denmark which published nearly a year before the filing date of the prior art ref and more than a year before the applications filing date.”

    A PCT continuation need not be a literal translation of the PCT. One of the advantages of the PCT continuation option is the ability to modify the application coming into the US; national-phase via 371 doesn’t permit that. (I believe (but haven’t checked) changes can be made and the continuation still denominated “continuation” rather than “continuation-in-part”.)

    In short, your 102(e) publication is not necessarily a pure English translation of that German (Danish?) PCT publication. In your shoes, I’d request the translation and delay the application the couple weeks it’ll take to get it.

  113. 114

    David French writes:

    After so many comments, I doubt anyone will read this. It’s not just about first-to-file. It’s about “absolute novelty”.

    This means you cannot get a patent if the invention has been made “available to the public” anywhere in the world before you file. Your own disclosures are an exception (thankfully) for up to one year.

    This also means that you can spike anyone else’s chances of getting a patent by making your invention “available to the public”. You don’t have to file a patent application to interfere with someone else’s patenting efforts.

    What does “available to the public” mean? Well that’s a big topic for another discussion.

  114. 113

    “It IS NOT however part of my job to ‘check espacnet etc.’ on every peice of 102e art that I want to use to make a 103.”

    Yes it is. You might want to read Rule 104(c)(2). Oh, in case you haven’t figured it out yet, “Rule” is synonomous with 37 C.F.R. That’s Title 37 of the Code of Federal Regulations in fancy lawyer talk. Check it out. It’s in the back of your MPEP. You remember that MPEP thing we talked about, right?

    “Guess what? Many of my applicants don’t even assert their assignment of the prior reference until AFTER I MAKE A 103, crazy isn’t it?”

    No, not really. You can’t use 103(c) to disqualify commonly owned prior art qualifying only under 102(e) if that prior art is used as anticipatory. You can only disqualify 102(e) commonly owned prior art if it’s used in an obviousness rejection, i.e. under 103(a). So if you use a 102(e) reference as anticipatory, it’s pointless to try to traverse it by establishing common ownership. It’s only when you use that commonly owned 102(e) reference in a 103(a) rejection that the common ownership becomes useful as a means of overcoming the rejection.

    Did they cover this in PTA? Were you sick that day?

    “While we technically don’t have to let them off, it’s accepted that we do.”

    Huh? If I overcome your rejection by disqualifying one of your references, you “technically don’t have to let me off”? What color is the sky in your world?

    “If there is some assignment database that has everything I would ever need to know, then why in the sam heck isn’t it merged with the assignment section EDAN for the prior peice of art?”

    You’re too funny.

    “it certainly seems that this invention in the domestic 102(e) available reference WAS described described in a printed publication in this or foreign country.”

    Nice quote from 102(e). But as I explained to you, the 103(c) exclusion doesn’t apply to anticipation rejections. As you clearly stated your rejection was under 103(a), the claimed invention WAS NOT described in the reference in the manner required by 102(e).

    “Key here is the fact that on the face of the 102(e) document is proof of the invention being described in a prior published document. The fact that it was not noted on which date the prior published document published is irrelevant since there is proof (citation of WO) on the record (in the 102e) that the invention was described in a prior published document in another country.”

    So if the face of your 102(e) reference cited the WO document, why didn’t you look it up to check its date? We’re back to that Rule 104(c)(2) thing again. Maybe you were sick that day too.

    “stop acting like the sky is falling”

    If your training, and attitude, are indicative of what we have to look forward to from the examining corps for the next 30 years, the sky has already fallen.

    “so you can simmer down and not have to worry about calling the director”

    Hmm, it sounds like you’ve been sent to the principal’s office before. Interesting.

  115. 112

    “So you’re going to stick with a rejection that the applicant has already established is legally improper? And you’re going to make it final?”

    Um JD I know what proper procedure is, and I also know that anticipating it MIGHT be overcome is part of my job. It IS NOT however part of my job to “check espacnet etc.” on every peice of 102e art that I want to use to make a 103.

    However, this is somewhat of a special case in that this document, at time of filing is merely an english translation of a previous publication. So now I’m supposed to say “well, I’m using this document as a translation, but the rejection is based on this other document”. Or, do you you want me to wait 2 weeks to a month for whatever translator we have on the job to do this just so I can make a proper 103?

    In addition, presuming that I did know that the other ref was published in the family tree, but used the other one instead since it was in english and there was no indication to me that they were commonly owned at the time, then what? Same ol bs exclusion. Guess what? Many of my applicants don’t even assert their assignment of the prior reference until AFTER I MAKE A 103, crazy isn’t it? While we technically don’t have to let them off, it’s accepted that we do. If there is some assignment database that has everything I would ever need to know, then why in the sam heck isn’t it merged with the assignment section EDAN for the prior peice of art?

    In addition, I hardly mean go ahead with the 102(e) rejection, but here’s the thing, it’s rejected under 103(a) iirc, NOT 102(e) (I did use 102e for a 102 above the 103 though lol). He merely asserts that that peice of art is unavailable under 103 since it is only available as prior art under 102(e). I have made no such admission since it is but a reprint/translation of a prior printed publication. If you or he thinks that it’s not “proper” in terms of a rejection then so be it, but stop acting like the sky is falling. If he properly traversed a final of mine as being improper I would simply withdraw finality, so you can simmer down and not have to worry about calling the director.

    NOW, take a big chunk of legislation and digest it.
    102:
    (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

    it certainly seems that this invention in the domestic 102(e) available reference WAS described described in a printed publication in this or foreign country.

    Thus, I would go final using the 102(e) available art document because it WAS DESCRIBED in a printed publication in a foreign country and is ALSO available under 102(b). The fact it was described in another language is hardly relavent if. The fact that it was described in another document is hardly relevant if the DESCRIPTION was in a printed publication in a foreign country. Which, I’m sure you are aware, the 102(e) art is merely a recitation of the description in the WO, and clearly shows on it’s face the source material, though it omits the pub date thereof since nobody had told them the WO had published at time of publishing of the 102(e) piece. Key here is the fact that on the face of the 102(e) document is proof of the invention being described in a prior published document. The fact that it was not noted on which date the prior published document published is irrelevant since there is proof (citation of WO) on the record (in the 102e) that the invention was described in a prior published document in another country. The fact that the specific publication is not cited in the list of references cited or the “Claims 123 are rejected under 103a ivo x) is irrelevant since the proof exists on the record already.

    Eat it. PWNT. Also, simmer down before I have to run you through 101. Now, all that said, I feel kind of bad for pulling an inadvertent “fast one” on him because he might have wanted to traverse the claims in another way. However, I’ve had wiser people than him traverse by 103 excluding AND traversing in different ways, so my feeling bad is somewhat lessened. Add to that the fact that this is a major corp, their invention isn’t patentable ivo of likely 100’s of other references, and I care near 0 if a 103 exclusionlol goes through for them. As a result I’m kind of meh either way.

  116. 111

    You can have a FtF system and a grace period – Japan has a 6 month grace period (albeit more limited than the current US) and a FtF system, which shows they are not mutually exclusive. Don’t let that issue cloud your judgment on the FtF issue.

    JAOI,

    Until I see some evidence to the contrary, I’m going to stick my neck out and say there probably isn’t one. And even if there is, I doubt it is a direct result of the fact that the US has a FtI patent system.

    I shall look forward to being proved wrong – with data and not anecdotes.

  117. 109

    In relation to my discussion about the patent bargain:

    “Firstly, isn’t the patent meant to be a bargain between the state and the inventor? That bargain being a monopoly of 20 years in return for the DISCLOSURE of the invention. If you haven’t filed, then you haven’t disclosed and fulfilled your part of the bargain. In other words, FtF rewards those who disclose first and fulfil their part of the bargain first.

    And don’t tell me that the US doesn’t work like that. Your 102 is worded as it is (excluding use or oral disclosures in foreign countries) so that the “inventor” who brings the benefit of that invention to US society first can be rewarded.”

    – I found the case supporting my 102 assertion.

    Gayler v. Wilder 51 U.S. 477 (1850), which states:

    If the foreign invention had been printed or patented, it was already given to the world and open to the people
    of this country, as well as of others, upon reasonable inquiry. They would therefore derive no advantage from the invention here. It would confer no benefit upon the community, and the inventor therefore is not considered to be entitled to the reward. But if the foreign discovery is not patented, nor described in any printed publication, it might be known and used in remote places for ages, and the
    people of this country be unable to profit by it. The means of obtaining knowledge would not be within their reach; and, as far as their interest is concerned, it would be the same thing as if the improvement had never been discovered. It is the inventor here that brings it to them, and places it in their possession. And as he does this by the effort of his own genius, the law regards him as the first and
    original inventor, and protects his patent, although the improvement had in fact been invented before, and used by others…

    It is well known that centuries ago discoveries were made in certain arts the fruits of which have come down to us, but the means by which the work was accomplished are at this day unknown. The knowledge has been lost for ages. Yet it would hardly be doubted, if any one now discovered an art thus lost, and it was a useful improvement, that, upon a fair construction of the act of Congress, he would be entitled to a patent. Yet he would not literally be the first and original inventor. But he would be the first to confer on the public the benefit of the invention.

    I think the last sentence “he would be the first to confer on the public the benefit of the invention” sums it up.

    Thoughts?

    PS JAOI,

    Thank you for your list, but I meant to ask, although admittedly unclearly:

    “I’d love to know the difference [in the number of gorund-breaking/profitable patents produced by independent inventors] between the US and RoW because reading the comments on this board, you would think that the US owes its global position to the small inventor

  118. 108

    Normski,

    In my experience, that’s not how it works.

    Big companies with any patent experience know that disclosure affects their rights overseas, so they’re on top of getting something on file (PCT or US) before that disclosure (usually, but definitely not always).

    The beneficiaries of our current system (FTI and section 102 novelty) are small inventors (individuals or small business/companies). They generally start talking about the invention and then someone they’re talking to says, “hey, you should get a patent.” They then seek out an attorney and try to patent and commercialize (by licensing or by contracting with a manufacturer).

    I know this discussion is only tangentially relevant to FTF v. FTI as it has more to do with absolute novelty, but I view the two issues as being related. Absolute novelty and FTF go hand in hand to prevent the “courthouse race” whereas absolute novelty works a bit contrary to FTI as the point is to give the inventor some time to feel out the waters and get something filed.

    With that and 4 dollars, you can buy a cup of coffee.

  119. 107

    Dear Leopold:

    Thank you for your personal opinion.
    With all due respect, however, for your consideration, a possible “Point of order”:

    It is true that the vast majority of Patently-O readers do not comment.

    And it is possible that this majority, and a majority of Americans, lean toward being passionately patriotic, or at least would not find my patriotism distasteful, or at least would be courteous enough to not voice criticism against my patriotism siding with those foreigners who frown on America.

  120. 106

    Max, EP:

    JAOI (TM) speaks for himself, not for all Americans. Hopefully, from my point of view, not even for a large number of Americans.

  121. 105

    Hello EP,

    You want intellectual? Then you should not have introduced your comment with your personal opinion that was a distinctly distasteful insult. Rather, if you find someone’s comments distasteful, simply scroll down and keep your insults to yourself.

    Re: “I’d love to know the difference between the US and RoW because reading the comments on this board, you would think that the US owes its global position to the small inventor…”

    Here’s a partial list: America owes its Prestigious World Position in historic relevant part to its Founding Fathers’ democratic Constitution and its Bill of Rights and subsequent Amendments, its American breed Leaders, its supreme courage, its strong patent system that motivates innovation and protects small inventors (your term, which I find somewhat distasteful – I prefer self-employed or independent inventors) and its hard working citizens and their core biblically-principled beliefs.

    The fact is that Europe produced Herr Hit ler, and Europe could have, but didn’t, nip the tyrant in the bud. Without your help, we nipped Saddam Hussein, for better or worse, history may yet tell.

    And here is another thing American have in abundance – Loyalty, but that is something you apparently know little about. But I’ll stop short of calling anyone over there ungrateful—I would not want to be too insulting—you have the upper hand on that, to wit:.

    “I am trying to get involved in an intellectual discussion – why don’t you give it a shot, instead of merely, as a 5 year old might, putting your fingers in your ears and shouting “nur nee nur nee nuh nuh” – that is not intellectual discussion.”

  122. 104

    It is indeed unfortunate that a factual and on-point discussion seems to be beyond many of the above commentators.
    For example, there are now considerably less than 50 cases a year in which someone who delays filing their patent application until after another independent inventor has filed on the same invention will succeed in obtaining a valid patent on it (instead of the first to file). So suggesting that it is a good idea, or safe, to delay filing patent applications under our present system is just a myth.
    There are some genuine issues here with this legislation, but as noted above by a few rational commentators, they primarily relate to the need to provide a ‘right to use’ defense for prior inventors to replace elimination of 35 USC 102(g)(2) prior invention defenses.

  123. 102

    Dyson isn’t the only one. How about Ron Hickman, the inventor of the Black and Decker WORKMATE? You have those in USA, don’t you? As to the casualties of the grace period, look into the story of Julio PALMAZ, the inventor of the coronary stent. J&J has done rather well out of that invention, but only in USA because Palmaz touted his thing before he filed. There are loads more examples. Thank goodness USA perseveres with the grace period. Otherwise ROW really would be dominated by US IPR. The days when USA was the only market in which profits could be made by selling goods are already history. People in Europe and Asia buy stents too, whether J&J likes it or not. Ask your medical device companies. USA is 300 million. ROW is the other 5700000 people and they are all steadily working on getting rich enough to buy stuff. Some people in USA are trying to modernise the US patent system, but there are a lot of interests vested in retaining the cost-extravagant status quo.

    BTW, is the Dyson vacuum absolutely that good? Or only comparatively excellent, when the others have a full bag of dust?

  124. 101

    JAOI,

    Firstly, I refer you to my point about finding some of these comments on the board distateful.

    Secondly, I fail to see the relevance of your comment – WWII is not a catch-all win every argument: “Hell I don’t agree, but at least we won that one – so we must be right on this one”.

    I am trying to get involved in an intellectual discussion – why don’t you give it a shot, instead of merely, as a 5 year old might, putting your fingers in your ears and shouting “nur nee nur nee nuh nuh” – that is not intellectual discussion.

  125. 100

    Some of the comments on this thread are worrying. I get the impression that many of the commentators are happy to rely on the first to invent provisions and the grace period.

    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 $$?

    There must be so many ROW patents with US priorities that are invalid.

    Surely, because a client could always decide to file overseas at the end of the Convention period, you should never ever rely on the grace period or first to invent provisions.

    Just my 2 cents worth.

  126. 98

    EP,

    I did not realize that Dyson was a recent patentee. I bought a Dyson. Awesome vacuum.

    That is all.

  127. 97

    This comment board doesn’t cast Americans in a good light – I find the fact that a bunch of supposedly educated group of people can be so arrogant and jingoistic distinctly distasteful – but then what would I know, I’m only a “second rate” citizen (i.e. ROW).

    Firstly, isn’t the patent meant to be a bargain between the state and the inventor? That bargain being a monopoly of 20 years in return for the DISCLOSURE of the invention. If you haven’t filed, then you haven’t disclosed and fulfilled your part of the bargain. In other words, FtF rewards those who disclose first and fulfil their part of the bargain first.

    And don’t tell me that the US doesn’t work like that. Your 102 is worded as it is (excluding use or oral disclosures in foreign countries) so that the “inventor” who brings the benefit of that invention to US society first can be rewarded.

    Secondly, as pointed out before, America is using a FtF system because a large number of applications will serve as priority for foreign applications – so if you’re not already hurrying your inventor then I suspect you’re not doing them too many favours.

    Finally, the comment that keeps being repeated is that FtF this will affect small inventors, i.e. a FtF does over the small inventor, but there are plenty of small inventor outside of the US that have been able to use the patent system and succeed. E.g. the UK has had a number of small inventors that have been able to use the FtF system and still win out, James Dyson of Dyson vacuum cleaners anyone?

    Also as an aside, can someone please give me a top 10 list of patents filed by small inventors in the US that have been ground breaking/seriously profitable, particularly in the last 10-20 years? (Remember Lemelson can’t really count as a small inventor since he had the same financial resources as a SME). I’d love to know the difference between the US and RoW because reading the comments on this board, you would think that the US owes its global position to the small inventor…

  128. 96

    We are the few, if not the only one, that uses “miles”, “inches”, “pounds” and not “kilometers” or “cms” or “kgs”. Does that mean we have to change that.

    If harmony is that important, do you need to have the Japanese to drive on the rightside of a road as most countries do?

    We have our FtI. We stay with it all along. We are used to the system, and we have our mindset and adapted it well.

    Why have to change…

  129. 95

    the shift to first inventor to file will do some to create global harmonization in invention however for true harmony global patent issuances need to occur in each country simiultaniously.As the master inventor lives here the best issuance country is here. making Patents more dificult to obtain stiffle inovation determination of important patents by marketability or unmarketability determination ensures the incentative to create is maintained wile sting or unmarketable patents never issue.

  130. 93

    Is an inventor entitled to the sweat of his brow?

    No, says the man in the boardroom; it belongs to those who can profit the most from it.
    No, says the man in the University; ideas just want to be free.
    No, says the man in Washington; it’s too much of a bother.

  131. 92

    “You people really need to examine FTF and FTI against actual data.

    This is worse than the Festo chicken littles.”

    Cheers to Hutz for being the voice of reason in a exceedingly petty and pointless argument.

    This one is right up there with Airbus vs. Boeing, butter vs. margarine, two spaces vs. one, and Star Trek vs. Star Wars.

    There are countless other things more deserving of all this passion.

  132. 91

    LL,

    Here’s my answer to your first part: If 6k had done his job, he would have found that published PCT that he claims qualifies under 102(b).

    I get garbage like that all the time. Here’s a rejection. Great, I’ll disqualify this reference (with common ownership, certified translation of priority document, whatever), politely note how the rejection is overcome, and earnestly solicit my notice of allowance.

    Oh, here’s a new rejection with a new reference that was never of record before.

    What? They don’t teach Rule 104(c)(2) over there? Or MPEP 700? How ’bout MPEP 900?

    No. I guess they don’t teach those things. Too busy hammerin’ home that quality = reject, reject, reject.

    But remember, 32+ month pendency and 760,000+ case backlog is 100% the fault of applicants and practitioners.

    I don’t smoke anything stronger than a cigar once in a while. Goes great with bourbon.

  133. 90

    Dennis, can you tune your Spam Filter to exclude the irrelevant words “harmonise with HITLER”? When I write an innocuous European “stewpid” I get a bounce back, but he can write HITLER with impunity.

    “Peter Hoffmann” might be just a naughty little boy, who (in the words of the nursery rhyme) “only does it to annoy, because he knows it teases” but, all the same, he should stop it please.

    Conversely, Mr Hoffmann should continue with self-delusional feel-good pronouncements like “commercial success is impossible for you unless you can sell >40% of your production inside USA”. Who sold him that line, I wonder?

  134. 89

    I work at a small- to mid-sized company. We act as though in a FTF system as it is. While I’ve instituted more formalized record-keeping to preserve evidence of conception/diligence, we just haven’t the resources to expend on interference proceedings. SO we try our hardest to get in the door first and be the senior filing party, forcing our competitors to decide whether to file second, provoke an interference, and try to establish a position earlier in time.

    So long as I can keep my priority claims, we’re OK with FTF. Or am I missing something?

  135. 88

    Dear Peter Hoffmann,

    I love you, and I never thought I’d want to say that to another man.

    link to patentlyo.com

    Ladies and Gentlemen, especially those comprising intellectual property People, the above link is a must read (it goes to the sixth comment above).

    THANK YOU Peter Hoffmann!

  136. 87

    JD, depends on whom you are dealing with. Our SPEs would do something. And a LOT of cases are signed by the examiner or a primary, not the SPE.

    And I notice that you did not respond to the 1st part that started this discussion…

    thanks,

    LL

    PS Don’t smoke – bad for the health ;)

  137. 86

    Again,

    You people really need to examine FTF and FTI against actual data.

    (1) It will make very little difference generally. Yes I understand they sound different, but if you understand 102(g), you will see that FTF will not make a difference in the vast majority of cases.

    (2) Small companies and independent inventors are not going to be disadvantaged (at least in the electrical/mechanical/software arts). They may be disadvantaged in chemical/biotech, but those areas are not mine, so I will not venture to guess.

    (3)You still have a year grace period for your own publications.

    This is worse than the Festo chicken littles.

  138. 85

    From the land of the Hilmer Doctrine comes Peter Hoffmann’s particularly rich assertion that ROW is the one with the protectionist statutory provisions. Could Peter by any chance particularise those provisions, or has he (like so many others) been simply brain-washed? If he could actually perform that small service, that really would be educational for me.

  139. 84

    “A pre-appeal would be the best way, though a call to the SPE might help in that case if he is not response to reconsideration after-final (depending on the SPE).”

    Why should applicant have to pay $500 to get a clearly improper rejection withdrawn?

    A call to the SPE??!!! Now I am ROFLMAO. In all likelihood, who signed the OA? If I request reconsideration after final, and it’s still not withdrawn, I should call the SPE??

    Please let me know where you get whatever it is you’re smoking, because I want to get me some too.

  140. 83

    JD, sorry, you are wrong on the interpretation, not I. I did not say NOT to check what the CURRENT assignment is. I said that “The examiner has no way of knowing if the application he/she is working on was, AT THE TIME OF INVENTION, designated for assignment … to the same company. That is evidence/facts that the applicant/lawyer/assignee would need to provide.”

    And I followed by saying the examiner “should ALSO make a “back-up” rejection (if reasonable art is available) based on other art that is not from the same assignee (or qualified under 102(b)).”

    What is wrong with any of that??

    Yes, the examiner should check for other related prior art; inventor searches; assignee searches (though try doing that for IBM or Xerox type assignees); and foreign related cases. (preceding not intended to be a comprehensive list, in case you want to say I left out some other source). Nothing I said ever indicated that the examiner should not do this. Try rereading what I did say, please.

    And, “no”, I am pretty sure 6k is not in my AU & probably not in the TC. Sounds more like 2100 or 2800. Probably the former. Based on what I can make out of his “explanation”, above, it does sound like his position of maintaining the 102(e) ref. when it was overcome is B$ & he should be called on it by the lawyer in the case. A pre-appeal would be the best way, though a call to the SPE might help in that case if he is not response to reconsideration after-final (depending on the SPE). My general opinion is to at least 1st try to convincing the examiner why they are wrong (if they are). And only go higher if they are clearly out of line. If it is a matter of differing opinions on art, for example, no, going to the SPE is not the right option. If they are not showing for interviews, I would drop the hammer down.

    thanks,

    LL

  141. 82

    All this talk about what the rest of the world does is bogus. Most of the patent laws in PCT countries are carbon copies of the French/German systems which were formulated to protect domestic industries with no consideration of awarding a patent to the individual inventor which is uniquely American and completely alien to all other countries. The German patent law which still has cartel protective stipulations going back to the Third Reich served as a model to the European patent law which in turn was copied into Chinese and Japanese patent law. An ironic situation develops as we harmonize with Hitler. Why would we give up on the best protection of the individual rights in favor of fascist companies and countries. We are the place where the rest of the world in order to succeed has to sell at least 40% of their production be it cars, drugs, or anything. Why would we kill off the only decent protection an individual (not only American by the way!) can get to build and contribute. Patents should not be a tool of the government to control and manipulate for social engineering. If we do not keep our way of life in favor of a change to cartellism and mass then we are obviously sliding into the rule by unelected commissions and the so-called international law, mostly inimical to our system of laws. Incidentally, foreign inventors have also thrived under our system. After winning all those wars, we are now ashamed of winning and leading. What a perversity.

  142. 81

    LL,

    You’re wrong again. If you’re using 102(e) art, you should anticipate that it may be disqualified. Exactly as the MPEP says you should. And you should do a simple review of the ref’s INPADOC family to see if it has a family member that may qualify under 102(b). AND YOU SHOULD DO THAT BEORE ISSUING YOUR FIRST OFFICE ACTION.

    They don’t teach you how to do something as simple as check espacenet over there?

    It’s clear 6k is not in your AU.

    BTW, what do you think of his “tactic” of “final and stick to the 102(e)”? Where did he learn that? Is it possible that the RCE gravy train riders over there suggested it?

    Should I have to call his SPE or TC Director to request that nonsense like that not be tolerated?

    “That said, if the examiner is doing things properly”

    Thanks for the chuckle.

  143. 80

    Dear Max,

    I am again amazed, I thought your penultimate post was also terrific. You keep posting like that and surely you will help me accomplish my quixotic mission, to galvanize We the American People comprising the intellectual community et al. to aspire to fulfilling our destiny to lead – our nation was founded by Leaders, not followers.

    Thank you again for your inspirational post. Please keep ’em coming and you may win the American Patriot Award bestowed upon a Foreigner who helped American realize it destiny.

  144. 79

    Caveman, I’m not a telecoms man but can you comment on that field. I think of global standards, and global leaders like Nokia and Samsung. Are they all American underneath, or just flash designers of housings? I’m interested.

    Then again, there’s auto technology. I didn’t know that BMW, AUDI and Mercedes were American , or in public ownership, or that their technology was copied from American stuff. Or are these two industries so trivial as to be not worth attention?

    I don’t know why I rise to the challenge though. All this anecdotal stuff is pointless, as the European commentators are pointing out.

  145. 78

    Dear Lionel Hutz, you ask if I am serious about the pursuit of happiness (that old inalienable right that all men of the USA enjoy) coming from killing small defenceless animals. I know some US patent attorneys who are happiest when they are off shooting ducks. Which part of “small defenceless” do you take issue with? Come to think of it though, I have no experience in taking on the (surely extra large) ducks that hatch out in Texas.

    JAOI is right: just because USA had a good 20th century for innovation doesn’t mean that its 21st, with the same patent law, will be as good. As the EPO President never tires of pointing out, the race these days doesn’t go to the biggest or strongest ones, but to the ones capable of adapting to change. She is aiming at her European audience, of course.

  146. 77

    JD, you are incorrect in your statement (or at least your INTERPRETATION is incorrect) of
    “Uhm, that’s your job. You may want to review MPEP 706.07(a), which states, “When applying any 35 U.S.C. 102(e)/ 103 references against the claims of an application the examiner should anticipate that a statement averring common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e).”

    While the quote may well be accurate, what you imply is not. The examiner has no way of knowing if the application he/she is working on was, AT THE TIME OF INVENTION, designated for assignment (sounds like a utility infielder :) ) to the same company. That is evidence/facts that the applicant/lawyer/assignee would need to provide.

    The proper course of action is to use the reference and make the applicant/lawyer come in with the needed information to overcome the reference. Simply the fact that the prior reference is currently assigned to the same assignee based on the front page of the patent (or the assignment page) is not sufficient. Similarly for the information from the application. The assignments are usually at the time of filing.

    That said, if the examiner is doing things properly, once they make that rejection they should ALSO make a “back-up” rejection (if reasonable art is available) based on other art that is not from the same assignee (or qualified under 102(b)). This way, there should not be a need to make the 2nd action non-final when the applicant easily overcomes the 1st rejection.
    If no other reasonable rejection is available, the examiner should either indicate in the action such, or even better, just call before sending the action out & ask the lawyer to submit the info & then allow the case once they do.

    The preceding is what I have had my examiners do & what we do in our art unit.

    thanks,

    LL

  147. 76

    I wonder how many “breakthrough” patents have foreign priority versus those developed in the US.

    Small inventors and entrepreneurs tend to have the breakthrough ideas, and they also tend to disclose before filing and take longer to seek patent protection. FTF hurts them. That is not what we want here in the US. The rest of you can have your FTF and corporate favortism. My favorite cases are small inventors who are excited about their new ideas. I’d really prefer to not turn them all away because they told their parents or friends about their idea.

  148. 75

    “ex #6 is indeed a scary one”

    Multiply him by about 3,000, all marching to the quality = reject, reject, reject drumbeat and the future is indeed bleak.

    Thank goodness for attrition!!!!

  149. 74

    Dear European,

    I think you clearly took my remark out of context. I said there is little entrepreneurship outside the government sponsored corporate or capitial markets. There seems to be some amount of bona fide private investment in places like the UK, Germany, Switzerland, Israel, for example, but the vast majority of the ROW such as Scandanavia, Asia and the like seem to have severely limited small venture incubation (unless we’re talking about mom and pop opening a sandwich shop). Please give me an example of a European version of Cisco and I don’t mean Cisco Europe.

  150. 73

    ex #6 is indeed a scary one – I can picture him rolling the steel balls in one hand while typing away with the other, when he should probably be working, if he is indeed that overloaded! I’m glad I’m getting out of the business!

  151. 72

    Reading some of the comments on here you’d think that the world outside of the USA is limping along on the edge of disintegration crippled by their anarchic legal systems and collapsing economies. I wonder whether these posters have ever been involved in filing non-US patent applications, never mind whether they have ever left the USA!

    For Example

    Caveman: “5. Since when is Global Harmony such a great idea? The places that have first to file (virtually everywhere but the U.S.) are places where there is very little entrepreneurship outside the Government sponsored corporation. The idea of incubating small companies is non-existent.”

    That’s right there’s “very little entrepreneurship” outside of the USA, and there’s no-where else in the world that small companies can thrive!

    David Cracappa: “First, if harmony is so good and the rest of the world wants it, let the rest of the world adopt our system.”

    Somewhat insular viewpoint don’t you think – if your system is perfect then how come each and every country that has reviewed the two systems over the years has come down on the side of FtF being the most practical and legally sound system. America isn’t always right you know!!

    No One in Particular: “A first-to-file system would be a disaster for creative work at companies, especially large companies.”

    Yep, creative work only happens in companies in the USA!

    And

    “A first-to-file system would be a bonanza for the Patent Office. There would be lots of Provisonal Applications requiring no work on their part and lots of badly written patent application that would be easy to reject.”

    If you look at patent applications in established F-to-F systems (such as the UK and EP) you’ll find that there’s no evidence at all to support the over simplistic argument that F-to-F leads to badly written patent applications.

  152. 71

    Max,

    “Normal not yet adult persons pursue happiness by killing small defenceless animals.”

    You mean Future Serial Killers, don’t you?

    Are you really serious? What kind of environment did you grow up in?

  153. 70

    “because the bastards didn’t put that they owned on the front of the other pub, I ha te when they do that, I’ve got to start looking up every 102e ref in edan now just to see if it’s avail for 103”

    Uhm, that’s your job. You may want to review MPEP 706.07(a), which states, “When applying any 35 U.S.C. 102(e)/ 103 references against the claims of an application the examiner should anticipate that a statement averring common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e).”

    That’s M-P-E-P. Stands for Manual of Patent Examining Procedure. Lots of useful tidbits in there. Check it out. It may even be available on your desktop.

    BTW, you can search the assignment records too. Let me know if you need some help, because it doesn’t appear that anybody over there is aware of this either.

    “so it’s either go nonf and cite the WO or final and stick to the 102(e)”

    So you’re going to stick with a rejection that the applicant has already established is legally improper? And you’re going to make it final?

    You certainly are amongst the best and brightest over there.

  154. 69

    “suspect that a large minority of US patent filings have a foreign priority claim, ie were drafted under a FTF regime.”

    It’s barely a minority and that will hit a solid majority sometime in the next 10 years I bet. When I first got here I was astounded at how many had FP, it’s just now evening down to under 50% for me personally and I know many other examiners have similar numbers. And frankly I can’t say they’re any worse or better than the american filed ones except for the occasional horrible translating job.

  155. 68

    Unfortunately Cave I had used the 102(e) without thinking about the whole 103 exclusion (because the bastards didn’t put that they owned on the front of the other pub, I ha te when they do that, I’ve got to start looking up every 102e ref in edan now just to see if it’s avail for 103) so now they’re making a 103 exclusion claim, so it’s either go nonf and cite the WO or final and stick to the 102(e), since I don’t believe that the claims would have been properly rejected unless there’s any kind of back publishing rule around. Of course, they did amend, but I don’t think it’s relavent if they make a 103 exclusion when they hadn’t even said they owned the reference (on the reference itself) yet, which is btw, dam near the most bith ased thing you guys do out there imo. I’m working a long night tonight to get a lot of amends done so I can maybe not get less than 95% at end o quarter. But of course I keep finding 102’s on all the amends I want to allow. I swear to goodness, sometimes this job is decent, sometimes it’s like, why in the heck is everything going against me atm? Anyway back to work Imma finish this other guy off tonight. It’s amazing how easy a rejection is to write with a 102b on everything compared to even a few 103’s mixed in. I might just do one big super sentence just to be a behind, since the other guy 103 excluded and put me in a bad mood. I do love boiling 5 pages of claims down to a 1/2 page rejection though.

    Thanks though

  156. 67

    Well said, BSN. The value of an anonymous blog is that correspondents feel free to divulge their prejudices. We from outside the USA can better serve clients who seek to participate in the US market when we have followed the “utter nonsense” above, to gain some insight into those prejudices. For me it is educational (and a good laugh) to read what Americans imagine will happen, when USA joins ROW and adopts FTF. BTW, the Framers meant FTF all along. They stated, wisely and uncontroversially, that the Government should provide a sane and fair system of IPR, but left the practical working detail for others to write. America, now’s your chance to do that job right at last. Stand on the shoulders of others, why don’t you? Why don’t you take a look at the scheme of substantive law of the European Patent Convention. It’s a practical fusion of English patent law with that of ROW. And it works. For the rest, see BSN above.

  157. 66

    “There were some that that were of European origin, but not many, and of those it seems as if they were interested in U.S. patent protection. I wonder why?”

    Perhaps it was because the US is a large market?

    My goodness, there is some utter nonsense being talked in this blog. I don’t have the figures to hand, but I suspect that a large minority of US patent filings have a foreign priority claim, ie were drafted under a FTF regime. Equally, a significant proportion of US filings are used as a priority claim in other jurisdictions, thus are subject to a FTF regime. The argument seems to be that these applications were all drafted in a rush to file, and therefore are more likely to be badly drafted and liable to be tossed out. Really.

    The success or otherwise of a particular patent system cannot be measured, and any attempt is a waste of time. One can refer to the all-knowing wisdom of the Founding Fathers, but frankly this wisdom is not evident in many aspects of American government. One can look at the success rates of start-ups, but surely this says a lot more about culture and access to capital (and isn’t that working out well) than it does about the patent system.

    The rest of the world would like the US to move to FTF because it makes life much simpler for us – we don’t have explain to our clients how the rules are different for one country. Apart from that, we don’t really care. Frankly, you should move to FTF because it’s a vastly more sensible, workable system … but if you choose to let ignorance rule, that’s your call.

  158. 65

    By the way #6K, what I think you meant to say is that you have an application *with claims* that read on…

    Sorry, to the best of my reading of the law as it now stands, English language publication is required for 102(e) art and its international progenitor. That being said, since 102(b) art can be any language, I’d say cite the 102(b) publication directly and get yourself home in time to watch the Simpsons. Forget about FtF.

  159. 64

    Oh, and can I get the best and brightest legal minds on this matter right fast?

    I have an application that reads on a prior art ref (US pgpub). The art is available under 102e by it’s filing date, however it also claims to be a continuation of a PCT filed in Denmark which published nearly a year before the filing date of the prior art ref and more than a year before the applications filing date. The PCT was designated in the US and was translated within a year (i.e. the prior art ref is in English).

    Applicant states that since the prior art ref is only avail under 102e then he can 103 exclusion it (prior art ref is assigned to his corp). The thing is, the PCT published in German more than a year before his filing date so I say he’s wrong, and furthermore that I can use the prior art ref itself in the rejection instead of the Denmark PCT because it is merely a republication of a prior publication except it’s in English.

    So, question is do I have to get a translated copy of the Denmark PCT and use that rather than the prior art ref in order to make the 103 rejection proper or can I just use the prior art ref and deny his 103 exclusion since technically that line of applications published 1 year (via foreign publishing) before his application? Is the fact that the prior art ref is merely a translation of the Denmark application relavent at all? Would FTF affect the situation any?

  160. 63

    FTF has been a good idea, for a long time (you think the rest of the world went loco, for no reason at all?). That dang constitution. If only I was Emperor of the Planet – then things would be different.

  161. 61

    Dear Wanker, I just checked around a little. Just about every list of startups were predominated by U.S. companies. There were some that that were of European origin, but not many, and of those it seems as if they were interested in U.S. patent protection. I wonder why?

  162. 60

    Mooney, you are so cynical as to be beyond help. I hope your mother loves you. Mooney, meet Doctor Si Koanalyst – he’s going to be chatting with you for a while.

    As for empirical data, just look around. How about you give me a list of major companies in Europe, Japan, China, and wherever else, that are less than 10 years old, that started from a venture small venture. Even Cisco’s substantial growth is right around 10 years. Go back to 20 and they weren’t even around.

  163. 59

    in my 2 or 3 decades of practice I have been involved in three interferences and derivation was the issue in two of them and the third was over quickly

  164. 58

    “NEW YORK (CNNMoney.com) — Stocks jumped Tuesday, with the Dow surging 420 points, its fourth-biggest one-day point gain ever, after the Federal Reserve cut the fed funds rate by three-quarters of a percentage point”

    Ah yes. Nothing like “free market” capitalism. I’m sure this will go a long way towards accounting for that humungoid pile of invisible, imaginary wealth that is propping up America’s banks right now.

  165. 57

    FTF – great system.

    Best benefit, kill horrid interference practice.

    By the way, it would not “create a whole new set of art”.

    What it would do is make all 102(a) art 102(b) art, with the own-publication exception.

  166. 56

    “normal not yet adult persons pursue happiness by killing small defenceless animals.”

    Bill Frist was not normal.

  167. 55

    Dear Lionel,

    Re: “Words do not count – actions do. … If we want to be perceived as number one, we need to act like it, not like some whiny, global bully.”

    In the words of Big Dan Teague, played by John Goodman in, “O Brother, Where Art thou?,”
    “Once again I find we are in agreement.”

  168. 54

    JAOI,

    The Constitution is a great document because it was a compromise between a bunch of lawyers and everyone walked away dissatisfied as they should from any good negotiation. It is a sound document to form the basis of a sytem of government. Further than that the ideals espoused by the Founding Fathers are truly great (whether they behaved in accordance with them or not – So what if when they said men were created equal, they only meant white, land-owning men).

    However, does this make us blessed by Nationality? I think we could lower the resentment quotient around the world if we didn’t engage in jingoistic behavior shouting how great are country is. Words do not count – actions do.

    You want to know why are economy is in the toilet? – 50 years of people swallowing the Corporate Mystique which includes such classics as the endless mantra of Deregulation, Union-Busting, and Privatization. If we want to be perceived as number one, we need to act like it, not like some whiny, global bully.

  169. 53

    Dear Max,

    This is amazing, I thought your post was terrific – nothing I can imagine could galvanize us Americans to fight for our destiny to lead more than your post.

    We the American People aspire fulfilling our destiny to lead – our nation was founded by Leaders, not followers.

    Thank you for your inspirational post. Please keep ’em coming.

    Also, please see:
    link to patentlyo.com

    Do We the American People really want to cede our Prestigious Premier Position?, step down and trust world leadership to some other nation?, perhaps to a socialist nation?, or a communist nation?, or a (neo)fascist nation?, or a totalitarian nation?

  170. 52

    “First to file makes the whole system easier for everyone involved with it to use. This includes inventors, attorneys, examiners and judges as well as whatever support staffing is involved.”

    In this case, E#6K is essentially correct. Private practitioners will have to adjust their client retention practices as I have mentioned earlier, but other than that people who are saying this will be a dramatic difference do not really understand the current system. Most FTI cannot establish diligence anyway.

    However, and also once again, I am all for holding FTF hostage until they eliminate disclosure requirements entirely. Harmonize one IP law, Harmonize all IP laws.

  171. 51

    What’s this wierd “inalienable right of every man to the pursuit of happiness” stuff? Presumably the Framers should have written “person” rather than “man”, no? Or do women get no right to pursue happiness? But, anyway, what sort of poor neurotic Framer cites the “pursuit of happiness” as inalienable right number 1? Normal not yet adult persons pursue happiness by killing small defenceless animals. Shall it be their inalienable right to continue? Shall they be taught in schools how to pursue happiness, that is, continue what they’re doing but in such ways as to get even happier doing it? Normal grown up persons try to lead better lives rather than busying themselves worshipping the Framers by “pursuing happiness”. Americans, shrug off your genuflection to an ordinary historical document made by humans with human-level drafting skills, and think more clearly about reforming your patent law to maximise the impetus it can give to innovation in all fields of technology, both pharma and eTech, for the general good of the US economy. If you think that’s FTI, so be it. Competition between FTF and FTI will sort out who’s right. Better that, than some sort of foul compromise between FTF and FTI that squanders any legitimacy in either of them.

  172. 50

    Early report on the oral argument at the Supreme Court about our second amendment rights
    link to cbsnews.com

    But not to worry 6k nobody wants to shoot you, you are the blog Jester. I’ll bet you even wear a classic funny Jester hat.

  173. 49

    My new invention of match or scratch inventor determining method makes first to file and first to invent obsolete. First to file is no good at determining inventorship in instances where devulgement has occured the race to the patent office frequently produces the patent awarding to frauding inventors and they still retain the right to claim stolen invention status because of the term first inventor to file.First to invent with backdating allows the theft of inventions by claiming previous research and development and creation of bogus evidence allows indivduals to defraud inventors by claiming antiquided existances that dident catch on and become massively known. My system requires 60 days advanced notice of intention to file to eliminate the potential of stolen patents by identifying who is able to produce it on the deadline in that catigory of invention.This eliminates the race to the patent office and awards the patent to the actual inventor. also in devulged situation the actual inventor will also be a filer so devulged inventions by process of awarding to the master inventor by volume of undivulged inventions the concept of worlds only inventor can be realized

  174. 48

    “First to file makes the whole system easier for everyone involved with it to use. This includes inventors, attorneys, examiners and judges as well as whatever support staffing is involved.”

    Really?

    “We’re having it end of story.”

    Really?

    LOL

  175. 47

    “(vii) our invention of the Internet;”

    Ordinary Ordinary Ordinary. Who was it that invented it? Gore? Or do you mean the DOD? Do you also mean that people weren’t hooking up computers to talk to one another in other areas of the world and the idea of networks wasn’t starting all over, but that we just happened to make a large network first? Don’t delude yourself on our “inventorship” of the internet. BTW, who has the patent on it? LOL

  176. 46

    First to file makes the whole system easier for everyone involved with it to use. This includes inventors, attorneys, examiners and judges as well as whatever support staffing is involved. We’re having it end of story.

  177. 45

    Dear Lionel,

    Re: “Under almost all criteria the US is never number 1. So why are other nations second-rate?”

    Please allow me to answer with a question: Would you rate The United States Constitution to the number 1 position among other constitutions?”

    There was a time — not too long ago — that I could have answered by saying these are among the reasons the United States is in the Prestigious Premier Position – Number One:

    (i) Our democratic three-branch government (i.e., our Constitution);
    (ii) our strong American patent system;
    (iii) our greenbacks overwhelming world-wide appeal;
    (iv) our nation’s educational institutions’ quality and quantity;
    (v) our leadership in nuclear and other energy innovation;
    (vi) our military might and technological advantage;
    (vii) our invention of the Internet; and
    (viii) our dynamic infrastructure.

    There was a time…

    These reasons point to a few of the goals to which We the American People should aspire, or re-establish, in order to fulfill our destiny to lead – our nation was founded by Leaders, not followers.

    Do We the American People really want to cede our Prestigious Premier Position?, step down and trust world leadership to some other nation?, perhaps to a socialist nation?, or a communist nation?, or a (neo)fascist nation?, or a totalitarian nation?
    ——————

    PS: Owing in part to the selfish greed-at-all-cost of company’s like Cisco that have anonymously spread Pejorative Patent Propaganda, our nation’s Prestigious Premier Position is facing decline. What worries me is that Cisco may be like a cockroach – if you see one, you are probably infested.

    * * * * *

    Dear Gauntlet,

    Re: “While I recall that in that post, he stated that he was Cisco’s director of IP, I do not recall where he stated that Cisco was aware of his blogging. It seems clear, to me, that Cisco’s liability is premised on this fact being true.”

    I do recall reading something Cisco’s IP Director wrote – he admitted that his supervisor knew he was operating Patent Troll Tracker anonymously. That alone may make Cisco liable.

    Yes, I think you are right, Cisco’s IP Director Rick Frenkel outed himself, but only because his true identity had been discovered – Rick jumped the gun, apparently thinking he could minimize the damage.

  178. 44

    applications would have to meet best mode, enablement, written description requirements, etc.

    invention scope might be limited too because inventors do not have time to consider alternative embodiments for inclusion in the application

  179. 43

    Coast,

    Thanks for bringing up my other point. Other countries (generally) do not have ESD’s, IDS’s, supplemental IDS’s, and inequitable conduct.

    Do you really want to get into a position where you have to file an application the day you get a disclosure to avoid malpractice? What about an ESD? Then how quickly is quick enough.

    A solid framework of rules that work together for their intended purpose and do not substantially change makes our patent system valuable. To monkey with that undercuts some of its value as an institution and technological stimulus.

  180. 41

    “ftf would result in much higher malpractice rates”

    That is great news for insurance companies, an industry which employs hundreds of thousands of patriotic Americans, allowing those Americans to feed and shelter their children — our future.

  181. 40

    My mother once told me:

    “Just because everyone else is jumping off a bridge doesn’t mean you have to.”

    Our 1 year gives small inventors a reasonable time to seek out help and get a patent filed. It may also give them time to shop the idea commercially and decide whether it’s viable. There’s a reason that the US is tops in innovation, and “global harmonization” isn’t that reason. It’s because in the past, we did was best for our country, our people, and the future. Why are we fixing something that clearly is not broken?

    (You can save your “bad patents” and “dubious validity” and “backlog” comments because they’re completely unrelated to my point.)

  182. 36

    JAOI,

    Not to be accused of being unamerican, but by what criteria are European nations (for example) second-rate? Under almost all criteria the US is never number 1. So why are other nations second-rate?

    I will agree with the original poster who suggested that if we are going to harmonize we should harmonize completely and drop all the Rule 56 BS.

  183. 35

    “Unfortunately, although the patent application was for an invention made for a project that was finished, I also had several other #1 priority items to work on for the next project and if they weren’t done as scheduled I would take a ‘hit’ for slipping the schedule.”

    Wow, what a compelling story.

  184. 34

    Thor

    I wasn’t the participant who raised TJ, but I think your scholarly submission would pretty well support my understanding of TJ’s shifting positions and hypocrisy.

    Up until he had patent rights of his own, in his plow, TJ was anti-monopoly. That position changed radically once he realized that he, personally, could benefit from a patent monopoly. He was brilliant enough with words that he could, as they say, make a silk purse from a sow’s ear. And he did. This was, please recall, the eminent American and slave-holder who had the gall to pen words to the effect that all men are created equal and with certain inalienable rights. He even worked and sold his own children as slaves.

    But getting back to F2F, in 1800 F2F would have been a disaster. Only those living in or near D.C. would have patents because it took weeks to reach the Patent Office from Iowa.

    Babel

  185. 33

    The other thing most people are forgetting is that in most cases FTF is no different than FTI. It will only be in a few cases that it will make a difference and even then it won’t often make a difference. The independent inventor still has to show that they worked diligently from concept to reduction to filing under current 102(g).

  186. 32

    A first-to-file system would be a disaster for creative work at companies, especially large companies.

    When I was working at a large company and the company decided that my work merited a patent application, it was made clear that my #1 priority was to supply the company’s patent attorney with whatever he wanted. Unfortunately, although the patent application was for an invention made for a project that was finished, I also had several other #1 priority items to work on for the next project and if they weren’t done as scheduled I would take a ‘hit’ for slipping the schedule.

    It is bad enough to go through this one-time after the project is done, but going through this several times during the project would
    effectively paralyze the development of new products.

    A first-to-file system would be a bonanza for the Patent Office. There would be lots of Provisonal Applications requiring no work on their part and lots of badly written patent application that would be easy to reject.

    It would also constitute a full-employment program for attorneys.

    And it would paralyze American industry.

    Of couse, now that most of American industry has been outsourced it will paralyze the rest of the world, too.

    The harmony is first-to-file. The melody is Looney Tunes.

    That’s all, Folks.

  187. 31

    Dear Babel:

    Thank you for your comment. You are well spoken and you added an valuable comment, especially for the eunuch I suspect you to already be {;-). No really, you made good sense, but only up to a point.

    Thank you Mr. Boy for bringing attention to my comment above:

    link to patentlyo.com

    BTW, did you mean to suggest that you are in favor of America joining the rest of the world by becoming a second-rate nation?, that you favor harmonized and pasteurized globalization that would typify a World-Orwellian-type community?

  188. 30

    I believe you will also see more disputes over 102(f) as more people will try to claim the other stole their idea.

  189. 29

    The person (or perhaps people – I skipped some posts to shoot my mouth off) who commented that independent patent attorneys will suffer the most under a FTF regime is correct.

    Independent inventors and small companies will likely benefit. Large corporations are not the most nimble at getting filings in. Also, ignoring interferences, a large company can often tie up a small guy in court over the issue of when the large company first developed and used the technology.

    However, the patent attorney who takes one month to complete an application may be crucified if any publication or patent occurs in the interim.

    My solution would be the rention letter for the client. Essentially (and I would of course finesse the wording) “The client agrees that the attorney has X months/weeks/days (“the Time Period”) from the date of disclosure in which to timely file the application (assuming the client’s full cooperation) and that the client will not hold the attorney or this law firm responsible for any intervening disclosures that occur between the time of disclosure and the date of filing as long as that date is before the expiration of the Time Period.”

  190. 28

    Dear Babel Boy,

    I think this is the relevant section of Graham v. John Deere. Can you point out where Jefferson is misquoted?

    Jefferson, like other Americans, had an instinctive aversion to monopolies. It was a monopoly on tea that sparked the Revolution and Jefferson certainly did not favor an equivalent form of monopoly under the new government. His abhorrence of monopoly extended initially to patents as well. From France, he wrote to Madison (July 1788) urging a Bill of Rights provision restricting monopoly, and as against the argument that [383 U.S. 1, 8] limited monopoly might serve to incite “ingenuity,” he argued forcefully that “the benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression,” V Writings of Thomas Jefferson, at 47 (Ford ed., 1895).

    His views ripened, however, and in another letter to Madison (Aug. 1789) after the drafting of the Bill of Rights, Jefferson stated that he would have been pleased by an express provision in this form:

    “Art. 9. Monopolies may be allowed to persons for their own productions in literature & their own inventions in the arts, for a term not exceeding – years but for no longer term & no other purpose.” Id., at 113.

    And he later wrote:

    “Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain time. . . . Nobody wishes more than I do that ingenuity should receive a liberal encouragement.” Letter to Oliver Evans (May 1807), V Writings of Thomas Jefferson, at 75-76 (Washington ed.).

    Jefferson’s philosophy on the nature and purpose of the patent monopoly is expressed in a letter to Isaac McPherson (Aug. 1813), a portion of which we set out in the margin. 2 He rejected a natural-rights theory in [383 U.S. 1, 9] intellectual property rights and clearly recognized the social and economic rationale of the patent system. The patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge. The grant of an exclusive right to an invention was the creation of society – at odds with the inherent free nature of disclosed ideas – and was not to be freely given. Only inventions and discoveries which furthered human knowledge, and were new and useful, justified the special inducement of a limited private monopoly. Jefferson did not believe in granting patents for small details, obvious improvements, or frivolous devices. His writings evidence his insistence upon a high level of patentability.

    As a member of the patent board for several years, Jefferson saw clearly the difficulty in “drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not.” The board on which he served sought to draw such a line and formulated several rules which are preserved in [383 U.S. 1, 10] Jefferson’s correspondence. 3 Despite the board’s efforts, Jefferson saw “with what slow progress a system of general rules could be matured.” Because of the “abundance” of cases and the fact that the investigations occupied “more time of the members of the board than they could spare from higher duties, the whole was turned over to the judiciary, to be matured into a system, under which every one might know when his actions were safe and lawful.” Letter to McPherson, supra, at 181, 182. Apparently Congress agreed with Jefferson and the board that the courts should develop additional conditions for patentability. Although the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson’s draft of the 1793 Patent Act.

    Thanks!
    Thor

  191. 27

    So the proposal really has TWO controversial (and potentially harmonizing) provisions:

    1) first to file, and
    2) absolute novelty (although slightly modified)

    These are distinct concepts, and your summary seems to treat them as one and the same.

  192. 26

    @Mike G:

    The Philippines abandoned first-to-invent a few years ago. We’re the last.

    Also, Jefferson was not violently opposed to any and all monopolies. He understood that sometimes government-granted monopolies were necessary for the production of public goods. See, e.g., this letter to his Treasury Secretary regarding the need for the government to grant exclusive rights to a salt mine in order to ensure production:

    link to books.google.com

  193. 25

    “At some point a small inventor wraps himself in an American flag and talks about our pioneering spirit which is still not data.”

    That is correct. It is not data. There is a term for such behavior though.

  194. 24

    Sir or Madam nailed it upthread: “first-to-invent is as arbitrary as first-to-file.”

    Indeed it is. And unlike first-to-file, it’s often impossible to determine unambiguously who invented first.

    End of discussion. United States inventors, meet the rest of the world.

  195. 23

    Chill out, people. “Race to the PTO” is a bit excessive. First, as Dennis points out, if you or or clients are filing abroad, they’re looking at your earliest Paris Convention priority date, so you’re already in a “race to file”. Second, although I have heard of cases where a company made (or lost) big $$ because they got their filing in day before (or after) a competitor’s, those cases are the exceptions, not the rule. We tend to know who our competitors are and what they’re up to, and we tend to know when we need to hurry and when not. And when we’ve gotten scooped, it hasn’t been because we were a few days late in filing, it’s been because, for example, a competitor of whom we were aware was more than a year ahead of us, as we learned when their PCT published a few months after we filed our provisional. FTF just isn’t the beast the naysayers make it out to be, and it sure makes things more predictable (although it appears that Congress is on course to screw up that part of it…)

  196. 22

    Ftf = Bilderberg group laying the groundwork for the New World Order. Or is it the Illuminati? Or is it giant shape-shifting lizards? Gimme a break…

    Caveman, do you have data to back this claim? “The places that have first to file (virtually everywhere but the U.S.) are places where there is very little entrepreneurship outside the Government sponsored corporation. The idea of incubating small companies is non-existent.” I hear this claim often but no dsts is provided. At some point a small inventor wraps himself in an American flag and talks about our pioneering spirit which is still not data.

  197. 21

    It is only a matter of time until the U.S. moves to a first to file system. With the exception of the United States and the Phillipines, every other patent system uses the first to file system. Over the last 40 years, the normative story driving the reforms has been to standardize global patent pratice. As a direct result, foreign policy has a greater impact on the USPTO than domestic policy. As a prime example, we can look to TRIPS.

    Additoinally, a Jeffersonian argument is of no avail. While it is important to understand what the Framers have intended, it is particularly important to note that the Supreme Court has abandoned this pratice in the realm of patents. For example, Jefferson is misquoted as supporitng patents in Graham v. John Deere. Unfortunately, Jefferson was violently opposed to any form of monopolies and in his letters to Madison he repeatedly stated so. Even so, the revisionist history within Graham v. Deere has largely undermined the legitimacy of a Jeffersonian argument.

  198. 20

    No discussion or analysis of FtF is complete or even worthwhile without analysis of the prior use rights.

    For instance, Dennis’ comment . . .

    “In the world of first-to-file, it does not matter who invented first, only who is the first to file the patent application.”

    . . .ignores the very substantial rights I have to continue using, making, selling the invention if I establish that I was using, making, and selling the invention prior to the date another was first to file. Who is the FtF is NOT the only thing that matters with respect to rights to an invention invented by two or more persons independently.

    The proposed FtF system does not cut off any rights of a first inventor who is second to file except the right to exclude others, and the first inventor is not affected by that exclusion himself.

    Although you remove the interference proceedings with FtF, the courts will have to start sorting out prior use rights, i.e., whether X made and used the invention prior to Y’s filing date. That will likely be a much easier factual determination than the present analysis of coffee-stained notebook pages and signatures of doubtful dates in interference proceedings.

    BTW, if everyone would just ignore Just Another Troll’s diarrheal diatribes, we can prevent this post from getting sabotaged like all the others in the last month.

    Babel

  199. 19

    No discussion or analysis of FtF is complete or even worthwhile without analysis of the prior use rights.

    For instance, Dennis’ comment . . .

    “In the world of first-to-file, it does not matter who invented first, only who is the first to file the patent application.”

    . . .ignores the very substantial rights I have to continue using, making, selling the invention if I establish that I was using, making, and selling the invention prior to the date another was first to file. Who is the FtF is NOT the only thing that matters with respect to rights to an invention invented by two or more persons independently.

    The proposed FtF system does not cut off any rights of a first inventor who is second to file except the right to exclude others, and the first inventor is not affected by that exclusion himself.

    Although you remove the interference proceedings with FtF, the courts will have to start sorting out prior use rights, i.e., whether X made and used the invention prior to Y’s filing date. That will likely be a much easier factual determination than the present analysis of coffee-stained notebook pages and signatures of doubtful dates in interference proceedings.

    BTW, if everyone would just ignore Just Another Troll’s diarrheal diatribes, we can prevent this post from getting sabotaged like all the others in the last month.

    Babel

  200. 18

    @Michael Femal:

    Your experience sounds pretty utopian. Have your clients never been involved in an interference proceeding in all those years? Or do these amicable settlements occur after years and millions spent in interference?

  201. 17

    “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. ”

    No doubt some companies will do this. But it’ll be just as useless as filing a provisional that doesn’t properly provide 112 support for the claims as it is for the same companies to do this today. The proper approach, both before or after such an amendment, is to file a proper disclosure once.

    As far as I can tell, the one good use of provisionals is as an insurance policy against inadvertent disclosures (by sales engineers at a trade show, for example).

  202. 16

    I thought the PTO wanted “Quality applications”.

    Haven’t they heard that –Haste makes waste–?

    How does a race to file enhance application quality?

  203. 15

    Excerpt from: link to en.wikipedia.org

    “In late March 2000, at the height of the dot-com boom, Cisco was the most valuable company in the world, with a market capitalization of more than US$500 billion. In 2007, with a market cap of about US$180 billion, it is still one of the most valuable companies.” (footnotes omitted)

  204. 14

    “The second one to think of a concept is not the inventor.”

    She’s not “the” inventor, she’s “an” inventor, unless she derived it from another. The Constitution says nothing about “first” inventors. Under today’s system, if the first inventor never files, or if he is not diligent with reducing his invention to practice, then the second inventor gets a patent. Unconstitutional? I don’t think so.

  205. 13

    Why did they kill THE PLEDGE OF ALLEGIANCE?*

    The three branches of American government have begun to operate at the behest of INTERNATIONAL BIG ORGANIZED BUSINESS, IBOB, not We the People. We have begun to join the rest of the world and become a second-rate nation.

    We the People grew up in a strong America which evolved into the world’s leading nation, the only super power. Our children have begun to live in a
    Globalized
    Modernized
    Harmonized
    Pasteurized
    World-Orwellian-type community.
    But George 1984 Orwell missed the boat: Government is not becoming big brother.
    Without end in sight, increasingly, government operates at the behest of International Big Organized Business, IBOB IS BECOMING BIG BROTHER.

    Our government, which is supposed to belong to We the American People, has been hijacked by IBOB before our very eyes despite THE UNITED STATES CONSTITUTION and its preamble which says:

    We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.

    Do you recognize the movie from which these excerpts came?:
    “There is no America. There is no democracy. There is only … a college of corporations, … and our children will live, Mr. Beale, to see that perfect world in which … all necessities provided, all anxieties tranquilized, all boredom amused.”

    Eunuchs all to be, each and every one of us.

    This is full text of the sound-bited excerpts above from 1976’s “NETWORK”**:

    ARTHUR JENSEN, President and Chairman of the Board of
    CC&A, Communications Corporation of America, speaks to HOWARD BEALE:

    JENSEN
    You have meddled with the primal forces of nature, Mr. Beale, and I won’t have it, is that clear?! You think you have merely stopped a business deal — that is not the case! The Arabs have taken billions of dollars out of this country, and now they must put it back. It is ebb and flow, tidal gravity, it is ecological balance! You are an old man who thinks in terms of nations and peoples. There are no nations! There are no peoples! There are no Russians. There are no Arabs! There are no third worlds! There is no West! There is only one holistic system of systems, one vast and immane, interwoven, interacting, multi-variate, multi-national dominion of dollars! petro-dollars, electro-dollars, multi-dollars!, Reichmarks, rubles, rin, pounds and shekels! It is the international system of currency that determines the totality of life on this planet! That is the natural order of things today! That is the atomic, subatomic and galactic structure of things today! And you have meddled with the primal forces of nature, and you will atone! Am I getting through to you, Mr. Beale?
    (pause)
    You get up on your little twenty-one inch screen, and howl about America and democracy. There is no America. There is no democracy. There is only IBM and ITT and AT & T and DuPont, Dow, Union Carbide and Exxon. Those are the nations of the world today. What do you think the Russians talk about in their councils of state — Karl Marx? They pull out their linear programming charts, statistical decision theories and minimax solutions and compute the price-cost probabilities of their transactions and investments just like we do. We no longer live in a world of nations and ideologies, Mr. Beale. The world is a college of corporations, inexorably deter- mined by the immutable by-laws of business. The world is a business, Mr. Beale! It has been since man crawled out of the slime, and our children will live, Mr. Beale, to see that perfect world in which there is no war and famine, oppression and brutality — one vast and ecumenical holding company, for whom all men will work to serve a common profit, in which all men will hold a share of stock, all necessities provided, all anxieties tranquilized, all boredom amused. And I have chosen you to preach this evangel, Mr. Beale.

    HOWARD BEALE (humble whisper)
    Why me?

    JENSEN
    Because you’re on television, dummy. Sixty million people watch you every night of the week, Monday through Friday.

    HOWARD BEALE (slowly rises, stares at JENSEN on the podium, transfixed—)
    I have seen the face of God!

    JENSEN
    You just might be right, Mr. Beale.

    * * * * *

    Endnote 1: Today, the Internet is subsuming TV.
    Let us eunuchs all to be face reality Internet: “Network’s” “system,” which was described in 1976 by Communications Chairmen of the Board JENSEN, is not fiction – it has begun to arrive.**
    ————————

    Endnote 2:
    As we speak here, the Second Amendment is being Orally Argued in D.C. v Heller in the Supreme Court — We the People may begin sliding on a slippery slope and begin to lose our right to bear arms.
    link to supremecourtus.gov
    QUESTIONS PRESENTED:
    Whether the Second Amendment forbids the District of Columbia from banning private possession of handguns while allowing possession of rifles and shotguns.
    ————————

    ** “Network,” written by Sidney Aaron Chayefsky, who also was a producer and composer, graduated from DeWitt Clinton High School in 1939, earned a Bachelor of Science degree from City College of New York, won a Purple Heart during World War II and many other awards in his lifetime for his creative achievements – he also saw our future and sounded the alarm. But we didn’t listen. The question now is,
    IS IT TOO LATE FOR WE THE PEOPLE TO TAKE BACK OUR GOVERNMENT?

  206. 12

    David, first-to-invent is as arbitrary as first-to-file. If the constitution is a concern, why aren’t we rewarding all the inventors who independently invent the same invention? What’s special about the first inventor, particularly if he/she works less diligently than another inventor who discloses it (i.e., files it) first?

    The US is de facto first-to-file anyway. Or is there an attorney here to tells his/her client there’s no rush? Show of hands?

  207. 11

    First, if harmony is so good and the rest of the world wants it, let the rest of the world adopt our system.

    Second, I was taught that “first to file” is simply against the Constitutional provision. Am I the only one that was taught that? Am I the only one that remembers that?

    The second one to think of a concept is not the inventor (no matter when he ends up at the PTO), and the Constitution gives *inventors* the right to their invention. I also thought there has been litigation on exactly that point many many years ago.

    On the other hand, if I’m wrong, and “first to file” is Constitutional, will someone be able to get an enforcible copyright on a creation by being the first to file a copyright application at the Library of Congress, even if someone else created the same expression of an idea first? After all, it’s the same Constitutional provision. Isn’t a copyright created as soon as the expression of an idea is fixed in a tangible medium? Would a “first to file” copyright violate any international copyright agreement – I’m thinking that international creators “bill of rights” (I’m obviously not a copyright expert).

    Might it be reasonable, then, to say that in a similar way: inventorship (the inventorship protected by the Constitution) is created as soon as the idea is “fixed” in the mind – i.e. the standard inventorship test is satisfied? Can this be violated by someone else who thought of the idea later simply filing an application for the same invention?

    I obviously find “first to file” confusing and I do not like the idea.

    Dave

  208. 10

    Mitt Romney’s PTO Director, small clients and their smart, risk-averse attorneys will also have the (seemingly cleaner) option of publishing immediately (before the application is filed). The non-innovative Big Corps. (who have enough resources not to need this route) hope that the troublesome patent applicants (and their risk averse attorneys) will avail themselves of this simple option, so that “technology transfer” (to the Big Corps.) will be more quickly and readily accomplished.

    So much for 18 month publication.

  209. 9

    I question the benefits of first to file stampede toward global harmonization of the Patent Reform Act. In my many years of practice, I find settlement amongst opposing interests in the invention is the usual results of two or more corporations or a mix of individuals and corporations claiming the same invention. The opposing parties generally come together and agree that each party will disclose their conceptual date with attendant evidence of the same during a joint conference of the parties. Then the party with the earliest substantiated conception date wins and the rest of the parties get a non-exclusive royalty free license to make, use or sell the invention but not to sublicense it. I have been involved with numerous settlements of this type for years in my practice and it seems work everytime whether the parties are mix of U.S. or foreign interests.

    Our current practice protects the intellectual property rights of the smaller entity whether an individual or a small corporation who may take a few weeks or even a month or two to raise enough money to afford our services for filing a reasonable patent application. The proposed change will foster more provisionals of dubious quality as all parties race to the USPTO to file and irreparably damage the smaller entity with limited resources. Will this proposed change of first to file really make our system in the US that much better? Is global harmonization with other nation’s patent systems that important to sacrifice the rights of the true inventor(s)? I think not on this issue.

  210. 8

    While the benefits of first to file are listed, we need to consider the detriments of first to file to individual inventors and start-up operations:

    1. The individual inventors are forced to spend scarce resources and time to “run to the PTO.” While an early good provisional is a defense, an incomplete provisional is not (see New Railhead). The individual inventor has to become proficient in patent law or pay a practitioner.

    2. Larger companies have more resources to create patent thickets around a filed application (all of which will be published).

    While economists question the value of patents in established companies, the importance of patents in obtaining funding is hard to question and seldom studied by economists (except the recent BU study on software patents). If “first to file” impacts the creation of new enterprises, it can have a negative impact on the economy.

    The US has an efficient capital market for starting new enterprises. The effect of first to file on this efficient capital market has not been studied or considered, to my knowledge.

  211. 7

    Oh, another thing: Interferences won’t go away entirely. You still will have big contests over what the count is; “right to make” disputes; issues of what the collateral estoppel effects of a lost count are and the like.

  212. 6

    Oh, another thing: Interferences won’t go away entirely. You still will have big contests over what the count is; “right to make” disputes; issues of what the collateral estoppel effects of a lost count are and the like.

  213. 4

    The big problem with first to file is the burden it places on patent attorneys. Every day you spend preparing the application, searching the prior art, discussing options and explaining the patent law to your client before filing is a day when someone else’s competing application gets filed. Since you have not immediately filed when getting the first snippet of an invention disclosure from the inventor, you have jeopardized and lost those rights.

    So, as a smart, risk-averse attorney, you do immediately file another provisional with every new snippet the client comes to you with. Once you have a proper case with the prior art evaluated and intelligently drafted claims, you file the non-provisional. In the meantime, all of those provisionals clutter your files, the clients files, the PTO files and make the job of the public in trying to determine your filing date for any particular combination of snippets all the more cumbersome.

  214. 3

    “The benefits of first to file:

    1. Encourages inventors to quickly file for patent rights;
    2. We avoid the potential for fraud in swearing-behind references;
    3. Interferences are gone (but derivation litigation is in);
    4. A patent would be more difficult to obtain – especially when the invention is easily conceived by another; and
    5. Global harmony.”

    What balanced piece would be complete without a list of the disadvantages or at least some counter points on the purported advantages

    1. “Quick filing” encourages the filing of underdeveloped technology
    2. Fraud in swearing behind references has not to my knowledge been a big problem
    3. Interferences are not a big problem, but when you need one its a nice practice to have available to prove seniority.
    4. First to file should not affect the degree of difficulty in obtaining a patent and explanation seems in order here.

    5. Since when is Global Harmony such a great idea? The places that have first to file (virtually everywhere but the U.S.) are places where there is very little entrepreneurship outside the Government sponsored corporation. The idea of incubating small companies is non-existent.

  215. 2

    I find it hard to believe, although less and less so, that you consider first to file “not the most controversial” provision. First to file is considered by most to be the single most controversial provision taken alone of any of the harmonization measures. In my time in practice, I have seen many “reform” packages come and all of them go. All were killed on first to file provisions.

    And, with all due respect, your explanation about a race to the courthouse is really rather simplistic for most practitioners. So one has to believe that you are beginning to pander to the uninformed. First to file is a bad idea. Its the equivalent of intellectual clear cutting.

  216. 1

    Global “Harmony” is a GOAL of this provision of “patent reform.”
    OK – if its “harmonization” you want, we should go all the way.

    So why does the bill include the requirement to submit “quality documents” (similar to the ESD) which is a step AWAY from Harmonization. To the best of my knowledge, no other jurisdiction has them.

    What about “inequitable conduct invalidation of patents” – to the best of my knowledge, a defendant can not use “inequitable conduct” as a patent infringement defense in other jurisdictions.

    And while we’re at it, why doesn’t the “patent reform” bill eliminate file wrapper estoppel – this would certainly “streamline” the litigation process, and bring about more “harmonization.” (to the best of my knowledge, no other jurisdiction has file wrapper estoppel)

    THe idea of “HARMONY” is just another propoganda phrase from the CPF and their ilk.
    Just like “modernizataion” lable slapped onto the legislative package which requires the re-adopting of damage apportionment principles which existed more than half a century ago.

    Hey CPF and Senator Leahy – just come out and say what you want – stop this bogus propoganda about “harmonization” and “modernization” and “streamlining” (Judge Michel hsa noted that the damage apportion sections of this legislation would make patent litigation MORE burdensome – this is NOT streamlining).

    This same comment is directed to the business press, which also includes the “harmonization,” “modernization,” and “streamlining” propoganda phrases.

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