[Update] A vote on S.23 is expected this evening, March 2, 2011. Before becoming law, the bill would need to also be approved by the House of Representatives.
I want to thank Professor McCrackin and her students for providing a useful analysis that compares the patent-race issues involved with the move to a first-to-file system.
I have long maintained that pressure to move to first-to-file has very little to do with these patent races. Interferences are extremely rare. And, as we all know, if it is difficult to prove prior dates of conception and reduction to practice, it is all-but-impossible to prove diligence at the level required by caselaw. Thus, in the words of Paul Morgan, analyzing the change in terms of the patent race is a "truly academic exercise."
For this reason, in my 2010 article on anticipation I decided to move the nomenclature away from first-to-invent and first-to-file systems and instead talk about whether the patent system is filing-date-focused or invention-date-focused and also to query the type of grace period allowed by the various systems.
What few are talking about with the proposed legislation is that it would increase the scope of prior art available to invalidate a patent – even when no competing patent application is filed.
In particular, the proposed legislation severely restricts the one-year grace period currently available to a patent applicant. Under the new legislation, a prior inventor could only antedate a pre-filing disclosure if that disclosure was (1) derived from the inventor or (2) made public after the inventor publicized her invention. Under the current rules, the one-year grace period operates without regard to the source of the putative prior art.
Even more, under current law, sales and offers-to-sell only constitute prior art if those sales occurred more than one year before the patent application filing date. 35 U.S.C. § 102(b). In those circumstances, no "swearing behind" is necessary against sales activities because they only qualify as prior art if they occurred outside of the grace period. It appears from the language of the bill, that no grace period would be allowed for pre-filing sales activities. Rather, the grace period language in the proposed bill only relates to "disclosures" and on sale activity is typically not seen as a disclosure.
From a practical standpoint, these elements involving the grace period are much more likely to impact patent applicants than any potential interference issue.
The proposed re-written novelty statute (35 USC § 102) would read as follows:
Sec. 102. Conditions for patentability; novelty
102(a) Novelty; Prior Art- A person shall be entitled to a patent unless–(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; 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.
102(b) Exceptions-(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if– (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if– (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed 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.
I agree — and have long thought — that the curtailing of the grace period is one of the more unfortunate aspects of this patent reform bill. I think it has much more potential to harm independent inventors than most of the other provisions.
I was suggesting software and BM patents as it appears the primary complaint by many advocating “reform” is that the PTO is not doing a good job in these areas.
That said, it is true also that I have also heard loud complaints about patents on bio… They tend to be functionally defined, it seems, and thereby way too broad. So the issue here is other than prior art; but it rather pertains to the age old problem of claim all equivalents without actually having described or enabled them.
I am not so sure the complaint is so much that the PTO is issuing patents that practice the prior art. I think the primary complaint is that the patents they issue are obvious,
Sure, if you want to split hairs. Obvious combinations and modifications of the prior art are themselves part of the public domain that is available for everyone to practice. It’s a perfectly legitimate complaint to assert that an obvious claim should be held invalid.
obvious in the sense that Malcolm so often mentions in connection with his constant drumbeat of complaint against software and BM patents.
I was going to go with the actual legal criteria for obviousness, but you’re welcome to use Malcolm’s version if you can’t find any direct authority. Even though I don’t see why the obviousness vel non of any claim in particular is relevant to this discussion.
“This new comment format makes it even easier to avoid reading his posts. Sometimes I don’t even read replies to his posts, depending on how I feel that day.”
Well, that’ll be the day, when you say goodbye
Yes, that’ll be the day, when you make me cry
You say you’re gonna leave, you know it’s a lie
‘Cause that’ll be the day when I die
Good Chuckles my main man – I knows you hang on every word. How else ya gonna know that you be feedin the Nazguls?
Practice the prior art?
Now, let’s refine that just a bit. I am not so sure the complaint is so much that the PTO is issuing patents that practice the prior art. I think the primary complaint is that the patents they issue are obvious, obvious in the sense that Malcolm so often mentions in connection with his constant drumbeat of complaint against software and BM patents.
I don’t recall your position on Malcolm criticism of the “unskilled” arts (his view), but I thought you were just a wee bit on the skeptical side that virtually all software and BM patents were invalid as obvious.
What say you?
IANAE, as you know, ping asked why someone, read infringer, would like to weaken the patent system?
I don’t know that, actually. This new comment format makes it even easier to avoid reading his posts. Sometimes I don’t even read replies to his posts, depending on how I feel that day.
Anyway, it doesn’t matter what you were replying to. It was a pretty awful analogy, and more or less typical of the general tone around here that patentees should have rights, and anybody trying to practice the prior art in the face of an invalid granted patent can go pound sand.
But, I’m glad you so identify with the Pirates, IANAE; and deem piracy in the public interest.
I don’t identify with pirates. What I deem “in the public interest” is not piracy, but the freedom to practice the prior art, and the ability to efficiently invalidate any patent that is broad enough to prevent that.
If you think it’s appropriate for patents to remove previously known products and methods from the public domain, then let’s get your cards on the table.
IANAE, as you know, ping asked why someone, read infringer, would like to weaken the patent system? Since answer is quite obvious, I just wanted to put it in more picturesque terms so that we can fully understand why the pirate companies are trying to weaken the patent system with the patent Bill. Could it be that they want more piracy at less cost. And just who is it that they steal from? Not the strong, but the weak — those who are their future competition.
But, I’m glad you so identify with the Pirates, IANAE; and deem piracy in the public interest. Let’s all get our cards and agendas on the table, shall we?
IANAE, I think you do not understand the proposal. I am suggesting that we retain first-to-invent for all purposes save for interferences – but that they be resolved by to filed first. Therefore, one would not have to do anything to create a grace period. It would be automatic with respect to prior art less than a year old. All you would have to do is prove prior invention.
If somebody files a patent application within a year of your filing date that discloses but does not claim the invention you are claiming, there is no interference and you can still file a 131 affidavit. In contrast, if that inventor is claiming the same invention as you, he wins because he filed first. However, as we all know, most interferences today result in a victory by the senior party. Thus, automatically awarding the victory to the senior party changes nothing in reality.
“that allows them to be lazy about their invention”
you been takin fluffy Sunshine pills IANAE?
My main man,
Let me know if you are purposely getting Ned-O’s wrong, so Iza could get out of the way of a carpet bombing.
I don’t think infringer’s (pirates) have any right that “we” all recognize. That be kinda against the right to exclude, wouldn’t it? Iza don’t recall that right to exclude bein a partial right to exclude. Iza also pretty sure that “public” and “infringer” are two separate entities in Ned-O-gram’s analogy. If ya just be messin with him ta get a response – that be cool, Iza just wants to know so I can get out of the bomb area.
Why would a pirate think that weakening the defenses of merchant ships is a good thing?
What a great analogy. You know, if the defenses of merchant ships were meant to strike a balance that allowed pirates to do a certain amount of piracy that we all recognized as a legitimate business activity.
By systematically ignoring the rights of the public,
It’s funny, because the pirates represent the public in your analogy.
The beauty of this system is that it simplifies things enormously but it still maintains the grace period.
It doesn’t maintain the grace period. If you do something that entitles you to one more year, and someone else files during that year, who wins the interference?
The grace period isn’t a “golden goose”, it’s something people use only because it’s there, that allows them to be lazy about their invention. If people were aware that there was no grace period, they would take more care to file an application before disclosing their invention to the public in a non-confidential way. People don’t actually need a grace period, except when the public disclosure is somehow accidental or unlawfully caused by a third party.
IANAE, actually, its pretty simple. Think today how one can rely on one’s foreign priority date to overcome prior art, but the patent, when it eventually issue, is prior art, not as of the foreign priority date, but the US filing date.
Priority and prior art are two separate things.
We can easily base priority on invention dates, and without making those invention dates prior art.
If there is a priority contest between two rivals to the same invention, we can simplify things by simply requiring that the first to file gets the patent. Kind of a hybrid system, but since the senior party almost always wins, we would not be changing anything fundamentally.
The beauty of this system is that it simplifies things enormously but it still maintains the grace period.
The pending legislation is horrible because it kills off the grace period, our golden goose. No one ever agreed to that even if we in principle were willing to go to a first-to-file system once upon a time.
Rrrrrrrrrrrr ya asking me matey?
Rrrrrrrrrrrr ya asking me matey?
Why?
Why would a pirate think that weakening the defenses of merchant ships is a good thing?
Hum?
I think I see a glimmer of an answer on the horizon…
Come on ping, I need help here…
Let me give it a shot.
In the words of the pirate lobby, they need to ignore the rights of the public in order to bring products to market faster and at less cost. If they “unfortunately” infringed on someone’s rights, they will pay for the stolen goods in due course, but no more than they would have paid had they simply purchased the goods in the first place, rather than steal them.
What matters most is market dominance. By systematically ignoring the rights of the public, and sacking every merchant ship entering the zone, the efficient pirate can prevent any newcomer from acquiring a foothold in the pirate’s kingdom. This is critically important for the pirate. The monopoly in the zone is maintained.
Hum.
But is this a good thing for anyone else than the pirate?
removing prior invention as prior art, but keeping it for priority purposes vis-a-vis prior art.
I’m sorry, that doesn’t make sense to me. As best I can understand it, you’re suggesting that the applicant’s priority should be based on his own date of invention vis-a-vis everybody else’s filing date. But in the event that an interference is provoked with the same prior art reference, the applicant would lose the ability to swear behind an earlier filing.
I don’t see how a hybrid FTI/FTF system would be workable. Priority is a pretty fundamental aspect of any patent system, and we need to pick which way it’ll be decided.
Not providing prior user rights would place the inventor on the horns of a dilemma, he could either file for a patent or run the risk that a later inventor will obtain a patent and shut him down.
Well, yeah. If you keep your technology a secret and don’t do anything that would constitute prior art (e.g. patent application, public use or sale), there’s always the chance that someone else will get patent rights to it. But since you’re doing the opposite of trying to get yourself a patent (i.e., abandoning, suppressing or concealing it), it makes perfect sense that you’d be SOL if someone else independently invents it and is thoughtful enough to disclose it to the public by way of the PTO.
Of course, the law already provides for that, so I don’t see it as a problem of the FTF system.
“Why would anyone think that making a patent weaker is an improvement?”
Bueller….
Bueller….
Bueller….
“It seems the best course of action for A is not to disclose his invention at all prior to filing”
Me thinks ya been away from reality for a bit too long there.
IANAE, Interesting. However, all I suggested is removing prior invention as prior art, but keeping it for priority purposes vis-a-vis prior art. Thus, when faced with prior art under 102(a) or (e) or (f), one should still be able to show prior invention.
The contest of inventors would happen only when each is seeking to patent the same invention. This is a “priority” contest. Here, we could make it that the senior party always had priority.
As I said, once interferences were considered priority contests. Prior art was not involved. Prior reduction to practice may have been prior art, but need not be. We could simply provide prior user rights, but that is a design and policy choice. Not providing prior user rights would place the inventor on the horns of a dilemma, he could either file for a patent or run the risk that a later inventor will obtain a patent and shut him down.
Given that the overall objective for so many for so long was to preserve the grace period, this might be a good compromise.
There’s still the fundamental tension between a grace period and a first-to-file system, particularly when the disclosure in question is enabling. Suppose A discloses to B, and B files first. Is B entitled as the first filer unless A can prove derivation? B’s claims would probably be invalidated by A’s disclosure, but that’s no help to A, who wants a patent.
What if A files first, B later files with the same spec but different claims, and A later realizes he wants the same claims as B? Is A’s spec prior art against B, or are B’s claims prior art against A? Do we look to see who invented the claimed invention first? Does that even make sense in a first-to-file system?
What if C invents, A later invents but discloses first, and C files first within A’s grace period? There’s definitely a good argument for A’s disclosure being prior art against C. However, why should A get priority over C when his action is completely antithetical to how a person should act when he wants a patent? He had a disclosure ready to go, and for a nominal fee he could have sent it to the PTO and gotten a more reliable priority date.
It seems the best course of action for A is not to disclose his invention at all prior to filing, but to focus all of his disclosure-related ambitions on the patent application itself. Which might as well be the law, so that lay people can be told in simple terms how to conduct themselves.
Indeed, look at what the IPO said last week as to why it was important to junk 200 years of success for something not clearly better:
“Eliminates costly and slow patent interferences proceedings conducted in the PTO and the courts to determine which inventor was the first to invent.
Creates legal certainty about rights in all patents, the vast majority of which never become entangled in interference proceedings in the first place, but which are still subject to the possibility under current law that another inventor might come forward and seek to invalidate the patent on the ground that this other inventor, who never applied for a patent, was the first to invent.
Encourages both large and small patent applicants to file more quickly in order to establish an early filing date. Early filing leads to early disclosure of technology to the public, enabling other parties to build on and improve the technology.
(Applicants who plan to file afterward in other countries already have the
incentive to file quickly in the U.S.)
link to ipo.org
Laughable and pitiable.
As Dennis notes, interferences are NOT a problem. Most times, the senior party wins. We “could” simply change this to “always” without changing the fundamentals of the system.
“Another inventor coming forward without a patent and proving prior invention?” What???? Where’s the jurisdiction to even file a lawsuit — unless, that is, the patent owner poked the cobra.
But, even so, I would support removing prior invention as prior art. A minor fix to bring US law back into its state prior to 1952. The unfortunate inclusion of 102(g) in 102 caused the problem. The solution is easy.
“Encourage early filing and faster disclosure.” Is this a virtue or a vice? Almost all would argue that the race to the PTO is not a good thing at all, regardless of the size of the company. Forcing premature filings is not wise. Forcing the filing on inventions that turn out to be dead ends is a luxury only the big companies can afford.
This listed virtue is the greatest vice of all.
So, in the final analysis, the proponents have no case. They present no arguments that make sense, or that cannot be fixed with more focused solutions. There is no need to kill the goose that has for so long served us well for something that has so many obvious flaws.
IANAE, Good point. I think we would also have to clarify that “prior invention” is not prior art. This “used” to be the law prior to the inclusion of 102(g) in Section 102.
A simple fix, therefor, would to remove 102(g) from 102 and put it instead in 135/292 with the limitation that the first filer gets the claims.
This would still leave “invention” in 102, allowing proof of prior invention within the one year grace period.
Given that the overall objective for so many for so long was to preserve the grace period, this might be a good compromise.
I am aware of no cases on appeal to the Federal Circuit where difficulties of proof of prior invention was an issue.
No, you probably wouldn’t be, because proof of priority dates is a question of fact that generally can’t be usefully appealed.
You can appeal all the other aspects like claim construction and what the reference teaches, but by that point it really doesn’t matter on what basis the reference has qualified as prior art.
Back to infringement validity — who has the problem, exactly?
That depends. Do you consider it a problem that the rules on priority of invention are different in different situations?
An interference is nothing more than a special kind of anticipation, where the anticipatory reference happens to be apparently entitled to the same claim as you, and your own filing might anticipate it back. What happens when you’re outside the delay for provoking an interference but the other reference is still citable prior art? Which rule determines whether your claim is anticipated?
Frankly, I have never heard of a case where the infringer has made an issue of dates. He simply alleges prior art. It is up to the patent holder to allege and prove prior invention. If he cannot do so, I suspect he doesn’t even try.
Again, I am aware of no cases on appeal to the Federal Circuit where difficulties of proof of prior invention was an issue. There was that recent Fed Cir case where the issue was whether the US reducer to practice was an inventor, but that’s it.
Ye$
Lionel, between rivals in an interference, only.
Back to infringement validity — who has the problem, exactly?
I am aware of NO cases where the issue on appeal had anything to do with difficulties of proof of prior invention vis-a-vis prior art. None. Zero. Nada.
I have never heard of outcry from the bar about losing cases because they could not prove prior invention prior to some 102(e) reference. I suggest to you, Lionel, that there is no problem — from the patent holder point of view.
So the problem seems to be, and let me just guess here, from the infringer bar who are disappointed that some 102(e) reference did not hold up in court or that they could not give the client a reliable yes or no in rendering an opinion.
Do I have that right?
Exactly, also establish that the patent holder has no rights prior to the date of filing.
A large company accused of infringement can tie a a small patent holder up in court for awhile on dates.
Actually, there is a very simple fix for interferences. Simply provide that the first filer gets the claims.
The problem for whom, exactly?
ping, indeed a great speach. She and Senator Boxer have done California proud.
Just two Senators from the nation’s most important source of new technology. Just two out of 100.
But we have 53 representatives. That is a formidable voting block, most of whom the last time voted for the patent bill. If they change their minds as well, then we can win.
“It’s not entirely ridiculous, if you think about it”
Its just mostly ridiculous if you think about it. Just goes to the white elephant question, that no one seems ta want to answer…
CC,
Not understanding the Ned-O question?
Do ya understand this one:
Why would anyone think that making a patent weaker is an improvement?
Now come Lionel,
Injecting common sense into the discussion is gonna rob the chuckle factor here.
What we need is a fix — such as a presumption of diligence unless a period of non activity exceeds, let us say, three months.
The fix currently on the table is that if someone else invents after you but gets to the PTO before you, you haven’t been diligent. It’s not entirely ridiculous, if you think about it.
Again interferences are not the problem. Infringement/validity suits are the problem.
So, the few interferences we have are expensive and don’t change the result. So, what do we do? Fix interfernces? No. We throw out the grace period.
Makes sense.
Obviously there IS something wrong with the proof required for due dilligence. What we need is a fix — such as a presumption of diligence unless a period of non activity exceeds, let us say, three months. This could operate like abandonment where the period of inactivity of two years is required before abandonment is presumed.
Go home CC.
But first, if ya gonna meddle, answer this:
Why would anyone think that making a patent weaker is an improvement?
And what are the likely odds of that happening?
Really, I am sure there are situations where there are competitors doing research and trying to develop the same widget, but the odds are low that you will be beaten to the patent office.
In any case, I would expect that under a FTF system, private prosecution agents/attorneys/firms will quote/negotiate prices based upon expected turnaround times and the engagement letter will reference the expected turnaround times.
Have you seen the case law on on sale activity) it does not have to be any of those things (unless that is how it is redefined in the current legislation and that’s what you referring to – in which case IGNORE ME!)
The problem is that lots of time and money is wasted on establishing a prior date – not just in interferences, but also in in infringement/validity suits.
Feinstein:
“Now the argument . . . that’s made for transitioning is that the rest of the world follows first to file, and this will harmonize our system with theirs. This is really supported by big companies, who have already made it, who have an international presence. Therefore, I understand their support for first to file. But under first to invent, we have been the world’s leader in innovation, and the first to file countries have been playing catch-up with our technological advances. So without all due respect, I wouldn’t trade America’s record of innovation for that of virtually any other country, or certainly any first to file country… A coalition of affected small business groups, including the National Small Business Association and others, recently said and I quote, that “first to file disrupts the unique American startup ecosystem that has led to America’s standing as the global innovation leader.” It’s critical, I believe, that we continue to protect and nurture this culture of innovation. And preserving the first to invent system that has helped foster it, is essential to do this.
Moreover, this bill would not actually harmonize our patent priority system with that of the rest of the world.”
You go girl.
I’ve just thought about that a bit more and now my head hurts.
Um, surely a disclosure of an idea that can be implemented in a non-disclosed but PHOSITA-obvious manner is an enabling disclosure?
TINLA, what would be so strange about a non-enabling disclosure rendering something obvious, yet failing to take away novelty. How could it reasonably be any other way?
The CAFC doesn’t write 102. It just has to interpret it as best it can. Blame the legislator, I say.
“There’s going to be plenty of crash and burn litigation trying to apply this new statute.”
Then ya do get my gist then.
“I get Office actions all the time that apply web page printouts from the internet archive wayback machine as prior art. ”
And you accept that without an avidavit? You be teh foo!
Just take at that site itself says – I be paraphrasing cause I just be too lazy – DO NOT USE FOR LEGAL PURPOSES.
Check out your own moniker, dude.
Our website has gone down momentarily due to a sudden surge in traffic. We apology for the inconvenience.
Since when is publishing something online not a public disclosure? I get Office actions all the time that apply web page printouts from the internet archive wayback machine as prior art.
Of course, I don’t really think that the CAFC is going to apply 102(b) literally and not require that the patent claims be enabled by the inventor’s disclosure prior to the other inventor’s disclosure. There’s going to be plenty of crash and burn litigation trying to apply this new statute.
I wouldn’t even put it past the CAFC to rule that a claim in inventor A’s enabling patent disclosure filed after inventor B’s non-enabling patent disclosure but within one year of inventor A’s non-enabling non-patent disclosure is obvious over inventor B’s non-enabling patent disclosure, but that inventor A’s non-enabling non-patent disclosure does not trigger the 102(b) exception that would exclude inventor B’s non-enabling patent disclosure. That just seems to be the sort of thing that happens around here.
Timing it right is a matter of fine professional judgement.
We don’t want to need fine professional judgment. We want a simple bright-line rule, like “if it exists, file it in an IDS” that leaves us free of liability without having to think too hard about anything or make any real decisions.
FTI is great for us. If it turns out someone else filed before our client, it’s not our fault. It’s our client’s fault for not keeping good enough records when he made the invention. And we can still save his patent in good enough condition to threaten BigCo with an expensive lawsuit if it doesn’t settle.
FTF would require us to make tough decisions, give our clients actual advice, and stand behind our opinions. You know, like lawyers do.
These short-sighted proponents of FTF have no idea what a disservice they’re doing the best job creators in the country – their attorneys.
6, er, there is no “French branch of the WIPO offices”. Also, the French IPO isn’t an International Search Authority, if that’s what you mean. In fact, it doesn’t perform any search at all! Since the 60s it outsources its prior art searches to what it was then known as the International Patent Institute and became the The Hague branch of the EPO upon its creation. And believe me, EPO examiners are so used to finding prior art the USPTO completely missed, that they would hardly crow about it anywhere…
I know of no caselaw anywhere in FtF land that would help you.
American tort lawyers will make it a case of first impression, then.
“To sum up, you need a rare combination of circumstances, before any client fancies its chances in a malpractice suit on the basis that you timed the priority filing badly.”
Sure, thats what Iza keep tellin my carrier too.
Whew, (C)onstitutional (C)risis avoided.
Maxi – why you still tryin to talk about US law? Ya think ya got any cred on the subject? Seriously?
As our favorite President (but for different reasons) used ta say…
“Well, there you go again”
And Maxi – ya still be wrong. AC comment was to US and I noticed ya sidestepped the whole bastardization angle – sorry that just didn’t fit into what you wanted to say.
“Or you could upload it to your website and publish it as a public disclosure”
Are they changing the “availability to one of the art” case law meaning too? Heck, if “the mere uploading” didn’t work for the Library of Congress, it be a safe bet it aint gonna work for your law firm website, will it?
Or this be one of those wrinkles that will come out in ten yeaars after litigation?
So AC, to repeat something I have been grinding on about here for weeks now (other readers please forgive):
The worst service you can deliver to your client in FtF-land is to file too soon, before you have defined the invention, written an enabling disclosure, and fleshed it out with a full set of intermediate generalisations. While hanging on to the priority date is hardly ever needed, when it is vital you will find the struggle to prevail on the point nerve-wracking and very scary.
The next-worst service is (of course) to file too late.
Timing it right is a matter of fine professional judgement. In malpractice suits, one usually goes down for gross negligence of missing a hard date, not paying a fee, no, rather than on a matter of fine professional judgement.
To sum up, you need a rare combination of circumstances, before any client fancies its chances in a malpractice suit on the basis that you timed the priority filing badly. In fact, I know of no caselaw anywhere in FtF land that would help you.
“If you fail to file that very day and your client loses to another who was first to file, you have malpractice liability. ”
Or you could upload it to your website and publish it as a public disclosure. Then the new 102(b) will essentially secure that date as your priority date. And the new 102b doesn’t say it has to be an enabling disclosure, so that might make it better than filing the inventor’s disclosure as a provisional.
First to file legislation should be retitled as Malpractice Attorneys Full Employment Act.
I agree that it is important to discuss the possibility of non-US protection with the client at that first meeting and if the client intends to file outside of the US, the incentive is there to accelerate filing.
By the way Max, how do you do in Euroland? Do you file the same day the inventor discloses to you or do you wait and try to do a good job? What happens to your relationship with the client if in so doing your client loses out to someone who filed between the time the client first disclosed to you and the time you file?
The point I make is that your premise is faulty. The proposed legislation still has a grace period but requires the very disclosure that causes the problem you identify in order to obtain its benefits, contrary to current law. THAT is no “fix” at all. That is perverse and a travesty.
MaxDrei, you have to understand that softie wofties, troll types and their cheerleaders (like ping) typically don’t file internationally, for obvious reasons. In ping’s case, of course, there is even less reason because in most non-US jurisdictions the demand for novel toilxt paper holders is rather low.
Ned, I frankly don’t understand your question. I’ll just tell you what appears to be happening now:
US inventor: Oh, I have this great idea, which is getting published next week in a scientific journal, but I’d like to patent it. Sorry for coming so late to see you.
US attorney: No sweat, you have this wonderful 12-month grace period to file the application.
US inventor: Great! Take your time with the draft, I want a super-duper patent with lots of pointless extra embodiments I haven’t quite thought of yet.
24 months later:
US inventor: The invention is doing great! Not so much in the US, though. For some reason the big, big market in novelty David Hasselhoff wigs appears to be in Germany. But we are still in the priority year, aren’t we?
US attorney: Indeed we are, if only just. I’ll call my European counterpart.
US attorney: Listen, we have this application we want to file over there within the week. Can you still do it? As you Americans say: Yes, we can. But the inventor didn’t disclose anything before you filed the parent application, did he?
European attorney:
US attorney: Huh, why do you ask? As a matter of fact, he did. But don’t worry, it was less than 12 months before filing.
European attorney: Oh dear…
Carefully, now CC, tell me just what happens when you disclose your invention before you file?
That is what Americans are being told they have to do if they want an grace period.
Smell a fraud?
First-inventor-to-file does secure exclusive rights to the inventor. The only question is which inventor.
We are dealing here with the situation where two inventors have independently invented the same thing. Somehow you have to decide which one gets the exclusive rights.
The language of the Constitution permits Congress to grant exclusive rights to an inventor. But it doesn’t oblige them to do so – they have discretion. They could choose not to grant patents to anyone.
It follows that where there is a choice between two inventors, Congress has discretion to set out rules for how to choose between them. Since they are both inventors, there is nothing unconstitutional about rules which prefer one over the other. Thus, first-to-invent and first-inventor-to-file are both proper constitutional choices.
Were it not so, then you could equally argue that first-to-invent is unconstitutional, since it denies exclusive rights to the second inventor, even when he was first to file.
I will repeat: ROW already has FtF. That’s 6 billion customers less 350 million or so US residents. So, any inventor bringing an invention to a US patent attorney to have it protected has a strong interest in seeing it filed that very day. If you ping, the private practice US patent attorney involved, file it instead a month or two later (perhaps after some nice drawings have been prepared) is there already a clear and present risk of a malpractice suit (when some other inventor filed before you did).
And that’s today ping. What happens in Congress is totally irrelevant to my question to AC.
“extend to total loss of all patent rights, everywhere in the world except the USA?”
Completely depends on what the client asks Maxie.
We both know, however, that that is besides the point, dont we, as this bastardization (S.23) isnt what ROW has and the rules (and consequences that be the point of AC’s comment) arent quite up to the implication ya want to reach with your post, aint it?
AC does malpractice extend to total loss of all patent rights, everywhere in the world except the USA? Or do you currently take as long as you please, to file at the USPTO, because ROW is of absolutely no concern to you, your client or your insurer?
“and judges can stop applying the old law”
Did you pull an all-nighter IANAE? Your comments are way off today.
“Is that the standard for malpractice liability now? Whenever your client loses, you’re liable?”
IANAE, were you missing the point there on purpose? Iza just wants to know in case you be unleashing some carpet bombing.
AC,
A better term – hyperhastily hash.
And don’t forget the dump truck of IDS for every one of those hhh.
Svck it (WWE reference).
If you fail to file that very day and your client loses to another who was first to file, you have malpractice liability.
Is that the standard for malpractice liability now? Whenever your client loses, you’re liable?
I’d be much more worried about malpractice liability if I drafted and filed an application in one day when no particular urgency was apparent, and my spec later turned out to have been deficient in some way.
But hey, more good news for the small inventor. You can’t bill him more than 24 hours while you’re covering your own hiney at the expense of the quality of your work.
Does anyone think they’ll make the law applicable only to applications filed after the date of enactment?
It goes without saying that they will (though I’ve said it once or twice), and you’ll also have a bit of notice before the bill finally passes because of all the time it takes for the votes and signing and such.
I expect we’ll see a flurry of applicants madly filing patent applications in the days before any FTF bill is signed, and then it’ll be a couple of decades before the old-timey cases work their way through the system and judges can stop applying the old law.
If an inventor shows up at your door with a reduced-to-practice invention, you MUST file a patent application that very day, if we move to first inventor to file. If you fail to file that very day and your client loses to another who was first to file, you have malpractice liability.
Is that the system we want? Does teh PTO really want those hastily-thrown-together applications? Will they make the PTO more efficient and ready to meet the challenges of he 21st Century?
First laugh of the day. Thanks ping.
Ya mean there’s a (C)onstitutional issue here?
HMS Boundy – where would the sense be in not setting up the next round of graft, er um, politiking for reform of the reform? These senators aren’t getting younger and those yachts need to be paid for.
I just thought I’d mention that no one cares 6.
Sorta like your IDS count project, or your law school career.