The U.S. Patent System moved one step closer to a major overhaul. On Thursday, April 14, the Judiciary Committee of the House of Representatives voted 32-3 in favor of the America Invents Act (Patent Reform Act of 2011).
As mentioned in Professor Sichelman’s post, A managers amendment would have changed the definition of prior art to include only (1) patent applications and (2) public disclosures. Under that proposal, non-informing uses, sales, and offers-to-sell would not qualify as prior art. However, that portion of the manager’s amendment failed (the rest of the managers amendment passed and is now included within the bill).
The amended act includes a several additional tweaks, including:
- A sunset provision for USPTO fee setting funding authority;
- A limitation that the new post-grant supplemental examination procedure (designed to allow an applicant to wash away the threat of inequitable conduct charges) cannot be used if the USPTO finds that the applicant committed fraud on the patent office during the original prosecution;
- The establishment of a pro bono program for assisting “financially under-resourced” inventors; and
- A few odd statements about the move from “first inventor to use” to “first inventor to file.”
•A few odd statements about the move from “first inventor to use” to “first inventor to file.”
These “odd statements” represent a change of priniple: from the US to the European system. This may also shift the power of the patent system to the EU. Perhaps a political economic view would be interesting from a US policy perspective. Now only a political corporate view of lower transaction costs through similar standards seems to be driving the agenda. If these standards now will be set by tye Europeans, they are probably laughing all whe way to the patent office…
I should say were still hopeful that some may realize they should share the wealth although hope is fading zero honest perope have steped forward so far
“They only want to hear the invention”
I done told you Mikey – I dont wanns hear it – not your invention, not your whining.
I want to SEE your invention in work. Stop the whining about not having money – invent your way around it – your three grandfathers HA_TE your whining. If they could they would disown you.
I better change that to improvements in the united nations after 1953. Anything before 1953 would be grandfather delberts and all other inventions back to 1869. I like that even when I am wrong the fact remains if it was in my life time I invented it and the same for my grandfathers in there lifetime.
It wouldent be so bad if it wasent for the fact that your talking our negotiator of the cuban missle crisis at the center of the cold war of course I also invented the united nations or the thing might have gotten whorse you got no respect for greatness here ned.Allot of you guys are just trying to figure the next way to steal an invention from me.
Im supposed to have entrapeneurs partners applying for partnerships but they dont email I am all over the internet. They only want to hear the invention by robing me then greedily take off and hopefully never to see me again except possibly to rob another one disgusting ingratitude .Why dont ya sign up if your honest and dependable I got invention consignments with no money down with your funded plan. Ya Get to work now ping.
I aint the one whining Mikey.
And yet you still are here, whining when ya got real inventin work ta do (I dont want you rieas, I want you to actually implement your ideas correctly and to stop inventin things that dont work and that I have ta hear ya whine about still more stuff.
get ta work already Mikey.
Now I got it ping you want me to invent something here in the blog so you can steal it. What part of no dont you understand Iam not into one line stands.
Cant go to work theres no jobs. I already there got the most important job in the world but nobody will pay. Got the best ideas in the world but nobody will invest yet so I cant start the world economic recovery by creating jobs by the tens of thousands. Ive already created every job and new company for the last 57 years so how do ya figure laziness no ping I think you a bad case of worthlessness. There you go putting words in my mouth again I dont want you to invent nothing for me you couldent anyway all your good for is hot air emitting from the shorts you place squarly on your head.The collections dept is not working well we got laws that protect criminals that Im trying to change with reform but you keep whining.
Actually with the new kapos plan you may as well close the patent office doors because youv seperated conception from the patenting process and awarded technical perfection the patent now conception wont hapen so nothingness occurs or a black hole.
“Ive got a collections dept for those with a guilty feeling about porking me”
Howz that working out for ya? My guess would be not so well, because ya still be whining all the time”
“Lets see you do something”
I aint the one doin all the whining – now you want me to invent for you? Your three grandfathers would disown you for such laziness. So now you are both inept (always inventin broken systems), a cry baby (whinin all the time) and lazy (wantin me to invent for you and your problems).
Here’s an idea – go and do some actual work and try ta not spend so much time whinin. Word striaght from your three grandfathers.
Glad you brought that up ned since my grandfathers conception of our patent system it has been a war zone of warring clans its time now to install a civilized program that protects inventors from thieves and murders in addition to startup inventor security we need the patent office change to a policing authority to eliminate thefting clan intimidation by enforcing one startup only allowance and recognize infringing patents immediatly to stop startups.
Im doing all I can improving the patent system to get recognition for the achivements of my grandfathers and myself is good publicity to attract investors in my preseed investments. Ive got a collections dept for those with a guilty feeling about porking me on all the great human advancement producing inventions of the past (so far all ingrates though ) even though I am offering It as a reinvestment alternative to incatrcerations.Lets see you do something like rounding up some investors so we can start an economic recovery I am paying a comission to common get busy see my website at http://www.ipinvestmentauction.com
great – stop living off the fame O your three grandfathers and do something.
Sayin ya invented stuff is just that – sayin. Let’s see some action, let’s see some implementation. Invent somethin that actually works already – your whining over and over and over and over and over abouts the same things is just a broken record.
I bet ya invented the broken record too.
Another critical thing is 30 days notice of public disclosure this allows disputed inventions to be identified. If objection is recieved by patent office the termcan be extended to 90 days allowing prep time for patent filing or duel simeltanious public disclosures for equal consideration and then additional evidencing methods inclusion for increased inventorship accuracy can apply.
There shouldent really be much problem determining inventorship the first discloser is the inventor then those who use that information to formulate improved versions are the dependants or business partners willing or not. They can file and be required to lisence with the original discloser or wait 14 years and file a patent on the improvements to gain market domination over the original.
ping as the united states historic high federal and the worlds high royal I couldent get any higher I live here at the place of both of them described in historic documents. You need to realize your just a slithering snake you should be sentenced to the rest of your like lived without the benefit of my and my grandfathers inventions you can sleep on a bed of leaves outdoors forage through the woods looking for grubs snakes frogs bird eggs and occasionally get lucky enough to stun a small animal with a rock to eat raw ive herd the insides are easyist so they went first.
Ned trust me on this one when you look at who was the first to file on each one of these significant inventions on file back 57 years and I am a 57 year old I was in contact with each one of these individules previous to there supposed invention I produced the original conception without witch the invention would not exist. Other people filed the people that filed sometimes werent awarded the patent and so forth. Wile I invented all proving all becomes more difficult as the individuiles are trying every trick in the book to conciel the facts in most cases ones that wernt financially profitable are naturally less guarded it would take 2 years to put it all back together although ive taken about a year to assemble lists of them.
Mike, in all seriousness, you could benefit from seeing a professional. You might want to discuss this with your family physician.
Right ned I am a russian communist who is trying to become the worlds richest capitalist what part of stupidity dont you understand. My great great grandfather discovered north america why dont you get off our contenent.
Ned youv aparently joind the ranks of the ignorantly beligerant retartives. of course you realize that if we had everything that I advocate in our patent system That a masterinventor would be able to prove that he was the worlds only inventor of significance. So acording to you I anm just sitting here beating my typewriter for nothing highly unlikely. So why dont you do something constructive like set up demonstrative instant guaranteed patent award First to file program with the patent office so I can prove your ignorance. Of course as soon as spoken others will attempt to run the invention back in time or discredit it in 100 defferent methods. you dont know anything ned where are you from straight down below heller hugh. You should see my website before you condem http://www.inventingconsultantcreator.net
In the present system it is wise to keep your invention in your head unless you find witch is not going to hapen because they all wqant to know what it is and then steal it or have large money reserves to develop it which is still risky because you have no expertise and prior art manifacturing expertise. Due to the patent office policy of being willing to award to the competition in the event of your unsucessful development the compeditors always wait out the inventor to steal the invention. The only way to combat this is never award to anyone but the original conciever 20 years should be minimum term. This forces the interested individules to fall in line behind the actual inventor who has the ability to efficiently avoid cost overruns because of his inventing ability.It also continues human advancement because the incentive to create more intellectual property is maintained.
Mike, since you or your clan seem to have invented everything despite evidence to the contrary, are you a Russian communist or are you mentally ill?
Err…
Actually, both are the same.
All true. Which is why it really IS important to retain FTI for at least the grace period, and have FTI outside that period.
At some point you must produce something or your invention could be nothing except an attempt to steal another persons invention or hot air. Your thinking like a pinger here milk your own cow not mine.It certanly would be nice to tie this into my conception of global immediate internet and patent office files check for novelty deterimination then you wont have to worry about 18months + secrecy attempts in uspto files.
You used to be able to its called initial disclosure document program I invented it and it never should have been eliminated its part of kaposesnew plan to steal inventions from inventors. Or you can file a provisional although the new kapos technical perfection may loose you the awarding rights.
“why not also with a confidential-disclose that is made to the U.S. Patent Office.”
Um, cause that would like ruin the efforts to strip out and undermine the Quid Pro Quo, which be behind the reason to eviscerate the patent system ta begin with?
Should I remind you of the adage “Why buy the cow when you can get the milk for free”?
mmmm fluffy comment by Sunshine in 4… 3… 2…
If one can obtain a grace-period with a public disclosure, then why not also with a confidential-disclose that is made to the U.S. Patent Office.
Revise the proposed 102b so that the grace period can also be obtained with a confidential-disclose that is made to the Patent Office.
Requiring public publication to obtain a grace-period will seriously hurt U.S. competitiveness and start-ups in multiple ways, including:
A) Loss of flexibility in decisions regarding the quid pro quo of receiving exclusive rights in exchange for public disclosure.
B) Allows large competitors and copiers (China/etc) to immediately exploit the creator(s) efforts.
C) Loss of potential first-mover product introduction advantages (why invest?).
D) Immediate loss of foreign patents.
E) Starts an inflexible/non-resettable 1 year clock for filing a patent application too early in the invention process (e.g., at conception of raw concepts).
If one can obtain a grace-period with a public disclosure, then why not also with a confidential-disclose that is made to the U.S. Patent Office.
Revise the proposed 102b so that the grace period can also be obtained with a confidential-disclose that is made to the Patent Office.
yes who would have its a total nightmare for human advancement and a sickening example of what hapens when master inventors are made heads of committee or listened to significantly. Precious time is wasting for correct patent reform as the whole system grinds to a hault with reguards to significant invention. They say this will ignite a wave of inovation yet it cant because they left the inventors out of the picture.
For you Mikey that would be higher. Not many things out there are lower.
“The standard also isn’t leave it on the shelf for 5 years”
Yeah – but that aint what ya said, no is it LH?
Tony, that would be to adopt the grace period solution used almost everywhere else in the world. Is that really what’s needed in the USA today? Where will that leave your comparative advantage?
Can’t be right, can it?
So, best think again, eh?
That suggestion makes sense. Part of me just wants to get rid of the exception altogether. Then, an inventor would have a 1-year grace period for his own disclosures (and those derived from the inventor) but no grace period against other independent disclosures.
I’m guessing this would be going the opposite way from what you want. I see benefits and disadvantages going both ways though
There may be one good thing about this public disclosure provision if it is worded to include internet typeins or urls to establish inventorship. another thing is private disclosures or accidental divulgements that can be tied together with a non inventors theft attempt from the actual inventor also needed is a masterinventor provision like the mccain plan to solidify the claim and reclaim what is stolen.
Na its close enough that the majority can get it if I was an attorney id hold myself to a higher authority or should that be a lower.
no ping you wining and everybody thats honest should be appauled and my three grandfathers were murdered by the same type of slime that dont want to eliminate corruption in this system such as yourself possibly.
Tony, my hope as well, and thanks for the discussion. Right now I truly believe people are not fully considering the ramifications of what they are proposing. We need to discuss it thoroughly so that any mistakes can be fixed in advance.
I proposed one before and I will again here. Simply limit the kind of public disclose that will equivalently grant an effective filing to a written document, distributed to the public, that describes the invention in the manner required by Section 112, p. 1. Require further that the applicant actually attach the document to his patent application together with reliable evidence of publication.
That should eliminate a host of problems.
If however we want public use type disclosures to also count, then the system in my view will not work and will soon collapse. It is much better that we stick to FTI, at least for the grace period year.
Ned,
I think I understand now. It sounds like the statute might be okay from the perspective of patent litigation (or at least theoretically) but not prosecution. What is the patent office to do when A files an affidavit but that may not be enough to reject B. Then you have the case of knowingly issuing two patents on the same invention. So maybe there is a need for some type of interference-like procedure as you pointed out.
It’s good that we are having this discussion. I hope someone with the ability to amend the bill is (although, I’m not too hopeful).
Who would have believed it — patent reform may finally pass. As usual, however, the devil will be in the details; the first-to-file, prior user, and post-grant issues may still prove somewhat thorny.
The standard also isn’t leave it on the shelf for 5 years and then file an application. There needs to be diligence in filing. Perhaps not as much as diligence from conception to RTP but still diligence.
Mr Thomas — Huh? You wanna rewrite that in English?
“Any unexplained delay may arguably be called “abandonment” ”
Um, no. The standard aint every waking moment.
Tony, I really believe I am right here. Very soon people are going to be demanding interferences so that they can confront the sufficiency of the evidence against them. Were before we had interferences when two parties are claiming the same invention, tomorrow we will have interferences where the right to a patent depends on who disclosed the invention first, and including obvious variations.
Any unexplained delay may arguably be called “abandonment” Les. That’s my point. If your client reduces to practice and comes to see you a month later because he needed to raise money, a second later inventor may get the patent rights whether that’s done through an interference or later when your client tries to enforce his “rights”.
Prove? Not really. 131 affidavits have to be supported by evidence to a degree. But statements of personal knowledge are accepted as true.
Only in interferences must evidence be corroborated.
That certainly is not enough for the PTO to prove it's case against B.
Sent from iPhone
Ned,
I maybe need to re-review the proposed legislation. Is there anywhere that would indicate that A can simply file an affidavit to make B’s application not prior art under the proposed 102(b)? I don’t see that anywhere. I would think that A would actually have to have proof of its prior use/sale (e.g., providing the sale agreement or something).
So, the PTO should “know” enough to either reject A’s assertion (and thus B gets the patent) or agree with A (and thus A and not B gets the patent).
B has due process. He can challenge the rejection to the Board, then to the Federal Circuit and then to the Supreme Court.
If the affidavit or whatever evidence isn’t enough to reject B’s patent, then in litigation, the parties can use discovery (subpoenas, etc) to dig up more information and attempt to invalidate the patent.
I don’t think this particular aspect of the bill is a problem (although, as discussed before, there are plenty of problems). Perhaps sometimes invalid patents will be granted, but that already happens all the time under any system.
I also note that I think we are approaching this from different perspectives. I deal with patent litigation and not prosecution on a daily basis.
“Ping thats precisley what I am doing here”
Um, no.
What ya precisely doing is whining. Your three grandfathers would be appalled.
Remember even in todays system the race to the patent office is not absolutely won by being first Filing within 3 days and 30 days allerts judges to a dispute potential This should be specified in new legislation along with invention clusters as evidencing methods. The greatest threat to human advancement remains file insertion to steal patents and how to eliminate the possibility or probility.
The other thing that needs to be done with public disclosures is reducing the perfection level to layman terms and complete or incomplete conception allowance to include novice inventors and indegents The forcs must be on identifying and preserving the unique intellectual property components. If sufficient It must be recognized as the parent patent and all subinvention would not exist without it (dependant).What must be eliminated is the mystery in the garage synerio where anyone can jump in and steal intellectual property.
Ping thats precisley what I am doing here. inventing solutions to perfect the system. Ya hear the same wine over again because you still talking the present and proposed system that is no good.Im talking betterment of human advancement incentives you talking trash. why dont ya do something productive like getting me on the committie so I can tell them why there direction makes no sence.
I was the original inventor of public disclosure evidencing for individules who mistrust the potential of uspto files corruption. now I am trying yo perfect it wile kapos and the comittie are going in otheer directions and not listening. Public disclosures need to become more credible by tieng them together with the upto and improving their intergity first is 90 days notice of intention to file and publically disclose simultaniously perferably with immediate check globally for novelty.This is used in undevulged situations and a devulged status an immediate challenge within 3 days dispute filing with immediate written knowledge of invention and improvement ability compatison for immediate conception awarding.
pro bono?!
I hear Mooney has a lot of extra bandwidth, and a substantial list of pro bono clients, both domestic and, apparently, foriegn, if by pro bono you mean clients that refuse to pay thier bills because of random statements in his responses like, “…while, the applicants admit that the invention is worthless crxp, the Examiner is requested nonetheless to reconsider the rejection…” and other general disfondnesses.
Ned, I don’t know.
I recall the old English case of Dr Dolland, who kept his invention in his closet. I learned as trainee patent attorney that keeping your invention under wraps is the worst thing you can do, because you will get hurt in the long run by the patents of others. Instead, you should either patent or publish. This strikes me as the theme of the America Invents initiative, an attempt to meet the needs of both the patenters and the publishers, at the expense of the closet inventors.
"They 'know' about A's prior sale. How? A's affidavit. You cannot cite that against B. There is such a thing in this United States of America called due process.
“I think I already responded to this part, but just to make it more clear.”
Well, I typed up another big long response, but it seems to have disappeared. Maybe it will show up, if not I’ll summarize again:
A’s prior sale is prior art to B’s application. It doesn’t matter that it isn’t enabling. That doesn’t even matter under the current system. B’s application should be rejected over that. (Of course the office may not know about it. But, that’s already commonplace under the current system). (I also note that B’s application cannot be rejected over A’s patent. A’s patent would have a later effective filing date over proposed 101(a)(i)(1) and would not be prior art).
In the hypo, neither A nor B should get a patent. If instead, A’s prior disclosure was an enabling printed publication, then maybe A should (but I’m not even sure if I agree with that). But, currently the 102(b) exceptions are quite vague. What does a “disclosure” mean. I think you are right that it may not have to be enabling (wasn’t there a past post on this?). So A maybe would get a patent for his non-enabling prior sale, which is crazy. Hopefully, there is an intelligent staffer out there that will fix this.
If the 102(b) disclosure doesn’t have to be enabling, this isn’t really FITF. Instead, it is First Inventor to File, Publish, Use, or Sell. If it has to be enabling then it would be First Inventor to File or Publish. Summary: This is messy.
Ned,
I think I already responded to this part, but just to make it more clear.
Regarding whether the patent office would knowingly issue two patents on the same invention. Well, they probably won’t know and so will, and that already happens all the time.
But if they know about A’s prior sale, then B’s application would be rejected under that. It doesn’t matter that it isn’t enabling (that doesn’t even matter under the current system).
So far, I don’t see why interferences would be needed. At least not under this hypothetical; maybe there are others.
I also agree with you that injunctions need to be automatic with the only consideraton to the contrary being the public interest, not the relative positions of the parties.
The most recent controversies about trolls, and you see it even in the halls of congress, is pure propaganda. Troll firms normally represent failed startups and the like, or large businesses who have discontined a product line and are selling their related patents to a troll firm to make money from their investment. All this comports with an essential purpose for the patent system in the first place — reward invention and inventors. The practice is entirely pro patent system.
The problem about hold ups, etc., is realted in large measure to the cost of litigation. But that in turn is realted to the litigation tactics of defense counsel to delay and drive up costs (and to milk a big pockets litigator for everything they can get). The reform here is in the litigation process, and in general counsel controlling their outside counsel. it is not in disabling the patent system.
New light, I agree with you that if secret use does not prevent the user from obtaining a patent, the risk of keeping the subject matter a secret must be papable. Thus no prior user rights as well.
Further, whatever is disclosed must be enabling not only to anticipate, but for obviousnees purposes. The courts got it wrong on that one.
One step further, if we are to accord the second filer the benefit of his prior public disclosure, it should be in writing, describe the invention being claimed in the manner provided by Section 112, p. 1, and be attached to his application on filing.
Congress is legislating blindly, rashly. There is no precedent for what they are doing, and the words they are choosing have no well accepted meaning. For the first time since our founding, they are pulling things out of their a.. and throwing it against the wall and calling the mess a patent act.
We are going to have to live with this. But why should we put ourselve through this. Why?
There are arguments for FTF. There are better arguments for FTI. But there are no arguments to enact new provisions into the substantive law that have no well understood meaning.
BTW, there is a provision that says something like this: “effective filing date of a patent or application.”
However, patents do not have effective filing dates. Claims or claimed subject matter does, however. So what are the courts going to do when they encounter such ill considered language?
Tony, you’re reading something into the statute that does not appear to be there. There is nothing in the statute that requires that a public disclosure be a printed publication. The patent office deals in printed publications and does not deal another kinds of disclosures.
If we want to limit public disclosure to printed publications I would think that Congress could find the words to say so. Because they do not limit public disclosures to printed publications when they so could easily do so tells me a lot.
So your presumption that the patent office will reject the B application over the A disclosure tells me you haven’t fully considered exactly how the new provisions would actually work.
I am assuming that in the ordinary case the B application will not be rejected over the A public disclosure. A will rather file an affidavit claiming the benefit of his prior public disclosure allowing his application to issue. B will then be rejected over the A patent. What is B to do? There are no interferences.
Now place yourself in the position of an examiner. The B patent has issued. You rejected A application over the B patent. A files an affidavit claiming the benefit of a prior disclosure. For example the affidavit states that golf ball so-and-so containing the magic ingredient was publicly sold prior to B’s application and less than a year prior to the applicant’s application. What are you to do? Demand proof of enablement? On what authority? Let’s assume that what’s in the golf ball is only an obvious variation of what is in the B patent? Is this the kind of disclosure that is sufficient? The whole area of obviousness is not discussed in the statute, but it should be.
But assuming that you agree to allow the A application, what you do about the B patent that has already issued? Remember there are no interferences.
I would suggest to you that the patent office has no authority to issue a second patent on the same invention. I would suggest to you that the director will invent some kind of way to invoke an interference between the application and the patent on the grounds that he has no authority to issue two patents on the same invention.
Now turning back to Congress for one second. Would they intentionally agreed to allow two patents on the same invention to knowingly issue? Knowingly? I doubt it. But that is exactly the system they are crafting.
Mikey,
If ya be half the great inventor ya say ya are, you woulda stopped the constant whining and invented a solution.
But noooooooooo, weza gotsta hear that same whine over and over and over.
Lolz Maxi,
Sounds like your admission in 3. overcomes your vaunted proselytizing (ad nauseum) in 2.
4. be universal – mankind, being what it is, and all that.
“First, do no harm” be always overruled by “First, maximize $intake”
Cmon Maxie – you note this concept on these threads recently. What now, ya forget what ya just said?
I take it, Ned, that you would exhort members of Congress to “First, do no harm” but that nothing now can stop them making their delicious multi-egg omelette.
So, New, here’s how i see it:
1. In my country, patent attorneys form one profession, and attorneys at law another. Patent attorneys get into the profession because they are passionate about science and technology and enjoy writing about it. Very few of them would be there if they had had first to qualify as an attorney at law.
2. At the EPO, the Boards of Appeal revoke issued patents issued for the whole of Europe: up to 42 countries. Members of the Boards of Appeal are, like European patent attorneys, interested in promoting progress in useful arts.
3. In consequence of all this, the substantive law of patent validity in Europe is deadly simple, and steadily acquiring more legal certainty. It gets messy, of course, as soon as there are infringement proceedings, injunctive relief and so on, for then every sovereign European country is still free to do its own thing, and does so in its courts, which are not always specialised to do patent work.
4. I fear for substantive law, in an esoteric field like patents, when I observe politicians (who don’t understand the niceties) being skilfully advised by powerful vested interest.
Ned,
“But in the brave new world of first-inventor-to-file, we have this odd new feature that allows one to “publicly disclose” and “reserve” a kind of effective filing date. But we do not require that a filer identify that the disclosure in his patent application, and we provide no procedure for a second filer to challenge the sufficiency of that the disclosure if eventually he is denied a patent because a second filer was issued a patent based upon an affidavit claiming the benefit of such a prior disclosure.”
I’m a little confused by this paragraph. If A makes a disclosure; B files, and then A files. B’s application will be rejected over A’s disclosure. A will get a patent even though not the first to file.
B can obviously challenge his rejection by arguing that the disclosure was not enabling, correct? I’m not sure that I see the problem that we’d need interferences for.
I must be missing something. (Although, even if I’m not, I still think the provision should be taken out.) Thanks.
Correct ned the congress refuses to enact integritious patent reform they are trying to maintain the same system or corruption in place since 1869 with edison and carnegees murder of masterinventor isiah roberts my greatgrandfather and the establishment of organized crime.There trading past methods of i.p. theft for new ones not improving inventorship determination intentionally in cooperation with big business this will shut down global signigicant invention conception totally creating a huge growing black hole. The america used to invent plan approved by oboma the most inovation retartive president in us history
Abandonment needs to be redefined lack of money and indegence cannot be used as a matter of justice as a reasoning for the term abandonment in ability to proceed and retention of intellectual materials laid out in a written disclosure need to be recognized or we have just one more method of inventors being legally cheated of there creative incenive and wrightful intelectual property
MaxDrei,
In trying to understand both your comment and your reply I came to the realization that you were talking about politicians and used the term lawyers. I then realized that you may have forgotten that here in the States, the two terms are not synonymous. The two are separate and distinct professions. A politician is not considered a lawyer.
So if I reread your first comment again and replace lawyer with politician, and look at the patent reform efforts of politicians it seems to make sense if I also adjust your “practice of law” comment. Politicians do not “practice law.” While they may write laws, the term “practice law” only applies to true lawyers. Different shoes altogether.
And I would agree that politicians are always interested in “new issues” even when the “issues” are not “new.” The reputation of politicians is even worse than the reputation of lawyers. They say that politics is the world’s second oldest profession…
New, Ned, when I typed out my comment above, actually I was thinking about the politicians and their motives. I should have started a new para before my words “More costs….”
Perhaps it is apochryphal but it is said that more than half of all the world’s literature on tax avoidance is in German. I am thinking that it is all too easy for a politician to enact legislation that obfuscates that which was hitherto clear, and that it is really difficult to enact legislation that benefits society by streamlining the subject. Those who succeed in streamlining should get kudos. Those that make things worse than they were before should receive the opposite of kudos.
New, if the shoe fits, you put it on. But do you not agree that lawyers enjoy the challenge of new legal issues? If they don’t, I would say, then they are in the wrong profession.
Was that meant to be sarcastic or cynical?
A pure first-to-file system, with the prior art having the effect as it does in the rest of the world, would fulfill the intended purpose of this exercise – “efficiency” and “harmonization.”
What we have in the present statute does neither of those two things. Everyone agrees on that. The rest of the world, as witnessed by your comments here, wonder exactly what we are trying to do?
Today we have interferences, but they are few and far between. Whether to engage in an interference primarily is discretionary. Only the most important patents go through this procedure. Everyone else avoids it by limiting the claims to different subject matter if they are the second filer.
We really have no problem with interferences. That is a red herring.
We also do not have a problem with patents being invalidated by the prior invention of others. I cannot recall a decision at the Federal Circuit level that involve this issue for the past 30 years. That’s a problem in theory only.
We have a problem only in third parties obtaining reliable invalidity opinions where no prior art invalidates the claims they are concerned with. To this I say, “So what?” I think everyone should operate on the assumption that the claimed invention was invented before the statutory bar, even if this is not true.
So the bottom line is this, our current system is nearly perfect. It has potential problems only. In practice, it works.
But in the brave new world of first-inventor-to-file, we have this odd new feature that allows one to “publicly disclose” and “reserve” a kind of effective filing date. But we do not require that a filer identify that the disclosure in his patent application, and we provide no procedure for a second filer to challenge the sufficiency of that the disclosure if eventually he is denied a patent because a second filer was issued a patent based upon an affidavit claiming the benefit of such a prior disclosure.
I predict, that we we will soon enact legislation to permit such interferences. Rather than determining the relative dates of invention where the first filer wins 95% of the time, we will be a trying determined just exactly what is a sufficient “public disclosure” because that term is not defined in the statute and it is not understood based upon prior experience here in the United States or anywhere else in the world. We are assured that it means that any disclosure be enabling, but what is not enabling about a product itself, just for example? A product can be reverse engineered. We simply do not know what publicly disclose means.
Nor do we understand what is exactly preserved by the prior disclosure. If the claim is to a genus, and the prior disclosure is of a species, which, as we all know will invalidate any and all claims to a subsequent filed patent application claiming a genus, can the second filer still claim a genus if the only is prior public disclosure discloses a species and the first filer discloses and claims the genus?
I don’t see a clear answer the question in the statutory framework.
So the bottom line is this, every patent is going to have uncertain validity based upon some indefinite “prior disclosure” to which it may be entitled. We still will not be able to give reliable opinions about the validity of of patents based upon the public record, as every patent has the potential to swear behind a reference less than a year old, just as they do now.
I think even the most hopeful and dedicated first filer advocates would recognize the problem here.
We really need to stop this now before it is too late.
MaxDrei,
I cannot speak for all and of course there are those that only want to make a buck, but I take my role and responsibilities seriously. I have an abiding ethical and fiduciary duty to my client to protect her rights.
The idea that purposefully pursuing “new issues” because they drive My Profits should be a moral slap in the face to anyone practicing law. You are appealing to the most base and worst characteristics of lawyers and only perpetrate the notion of ambulance chasers that the industry strives to eliminate.
I hope this thought occurred to you when you wrote your post, and I hope my reaction is the reaction that everyone should want to see.
Ned,
I have been thinking about the complexity/simplicity dichotomy and have a few more ideas to share, and would like your feedback.
I do not have a problem with secret use. I think the case law on this subject goes out the window with a sea change from first to invent to first to file (the first inventor to file to me is an absolute worst thing to do – taking the worst of two different regimes in the mistaken idea that a “step” from one to the other is somehow a step in the right direction whereas it is a step into oblivion – in biblical terms, neither cold nor hot will get you spit out of the mouth).
With case law gone, the ability to use trade secret should not entail any other penalty than the exacting penalty inherent in a race based system. If you decide to play the secret game and anybody else beats you to the Office – you lose. Even if that other person takes your product out on the market, reverse engineers and is capable thus of “inventing” in a manner that enables and then races to the Office, the prize should go to them. Period. No further questions need be asked. No quarter given. No should thing as “prior user” rights should even be entertained.
Furthermore, for anything to be considered prior art, that item must meet the exacting standards of full disclosure and enablement. Anything short of that simply falls short and should not count. To include “offers for sale” as a “prior art” slaps the very efforts of commercialization that should be encouraged.
This strict standard should be coupled with a very strict standard under 112 for patent grant. This idea of “without undue effort” is misplaced in my book. A person of ordinary skill in the art should CLEARLY be able to read a specification and reproduce the claimed invention. If one cannot clearly and succinctly describe what one has invented, then one has not invented what one has claimed. Claims should not be a game to have over-broad muddled “ideas” couched in what somehow could be adduced from the written specification.
So anything that is to be considered as prior art must also meet this rigorous standard. Items that are written about that do not meet the strict enablement standard are no better than science fiction or fantasy and if they fail to meet enablement, then they have not met the concept behind Quid Pro Quo. If they do not meet it, they should not block someone else who does meet it. Not for novelty. Not for obviousness. Science fiction has no place in stopping actual progress.
Make the race as clear as possible. Remove the guesswork and gamesmanship. A clear winner is what is needed. Such clarity will also decrease the necessity for lawsuits later.
The flip side of this bigger stick should be a bigger carrot. Make the patent right even stronger by increasing the level of evidence needed to overturn. Make the threat of injunction stronger because injunctions return the very essence of what a patent means back to the patent holder.
Patents should mean something. They should be impressive. Trying to ameliorate perceived shortfalls because of process errors by making the end product mean less is a grave error and in the end goes against the very reason for having a patent system in the first place.
Using all 15 of the methods I have created is going to perfect inventorship determination eventually to the point of of absolute certantity of course attorneys might not like that since they are all involved in cheating the actual inventors weather they know it or not is there an attorney in the house I need 200 contingents immediatly.
josh theyve got fourty different methods none of them corrected by this legislation I am
there largest victim they call me the didget.I think that means the I am the one that the conspiracy defrauds every time.Certanly you shouldent believe in the present or proposed system that if you have a valuable idea your going to be awarded the patent.
Ive created about 15 new methods of to eliminate this problem and improve inventorship determination but no one listens or includes them in legislation. With reguards to first to invent the terminology should be first to file as a primary method of determining first ro invent however this is already how its done presently so this bill just wastes 1 billion in taxpayer money with no improvement.
The reform legislation should be reconstructed to improve inventorship determination methods that have failed so miserably in the past.Establishing different standards for dealing with non inventing entities as opposed to inventing entities needs to be accomplished. Non inventing entities are always obtaining ip through doubious means and the thefting needs to be recognized and legislated against this is where money rears its ugly head in buying legislators.
Ned writes: a new first to file regime with a grace period is going to introduce all whole host of new issues
True. But lawyers enjoy “new issues” don’t they? More profit in the practice of law. More costs for business people? Who cares?
I wholeheartedly agree that a new first to file regime with a grace period is going to introduce all whole host of new issues. We are soon going to be asking yourself why we did this to ourselves. While we might eliminate interferences, we are going to create havoc and chaos in its place.
First to file may bring efficiencies, but first inventor to file will not and that is for certain. However if first inventor to file is necessary for start ups and for universities, my simple suggestion is not to adopt a first inventor to file system, but the continue with the current first to invent system.
Ned,
In a strict race to the Office, there is only one thing that matters – getting to the Office. With that in mind, I would suggest that there should be no grace period of any kind. None. To invite grace periods is to invite the need to resolve conflicts created by the very introduction of those grace periods. It is indeed a slippery slope of then trying to decide what shold and what should not come into play. Once on that slope, the benefit of having a first to file slips away, and all type of chicanery or ability to game the system based on factors outside of the invention itself come into play.
Occam’s razor should dictate the path here.