Professor Kieff: Problems with First-to-File

Professor F. Scott Kieff (GWU) notes that debate over the constitutionality of a first-to-file patent system hides the major policy concerns associated with FTF and more specifically with the major amendments proposed in the patent reform measures winding their way through Congress.

Kieff writes:

Basically, the efficiency gains of switching to FTF can be easily eclipsed by a marked increase in uncertainty and other costs as we try to figure out how to really handle these different real world situations. What is more, the way many of the rules in the proposed bill stack up is to favor incumbents by a large margin.

In a series four short essays, Kieff outlines his position against FTF:

123 thoughts on “Professor Kieff: Problems with First-to-File

  1. 122

    Ned, you give a brilliant example of the obfuscatory effect of adjectives. One of the first things I was taught as a patent attorney trainee was the danger of including an adjective in a claim.

    Sometimes a “lie” is the option that fits best with human dignity, the general welfare, and a clear conscience. But an “outright” lie? That might be another matter.

  2. 121

    I don’t know. But I must say that it seems very common in litigation and politics.

    As I have said before, if I were a judge and anyone pulled what Quinn tried to pull here on me in court, I wouldn’t trust a thing they said to me in the future.

    In politics, sometimes you have to hold your nose if you otherwise like the guy. But once you catch a politician in an outright lie, I for one wouldn’t trust anything he said in the future. I really really despise dishonesty.

  3. 120

    I’ll stay out of this. Ned can you perchance tell me where the very useful expression “economical with the truth” originated? Just curious.

  4. 119

    Max, thanks for the heads up about Quinns article.

    However, he is flat out wrong about the 1790 Act. It was not a first to file statute. Not at all. In fact it was the reverse. His statements are not only false, but he must know they are false.

    See, page 289 of the following article:

    link to

    link to

    Federico, Pasquale J. “The First Patent Act.” 14 J. Pat. Off. Soc’y 237 (1932).
    Online: HeinOnline: link to
    Print: K10 .O962 (Location: SL1)

    Federico, Operation of the Patent Act of 1790, 18 J.Pat.Off.Soc. 237, 238 (1936)

    He further says that the 1790 Act was a registration system. That is a flat out lie as well. Jefferson and the other Board members had to examine the patents. They freaked and demanded a registration system: the 1793 Act. See, e.g., link to

    Also see Graham v. John Deere and its extensive discussion.

    I would suggest that Quinn’s scholarship is not only weak, but he is not generous with the truth.

  5. 118

    Un-American, Face? Obviously you have not yet seen patent attorney Gene Quinn’s scholarly article in his IP Watchdog blog, where he explains that The United States had a FtFile Statute, before it moved to First to Invent.

    “The result…” you write, with absolute certainty. But have you any idea at all, how priority contests shake down under First to File? I know how it works under First to Invent, and it isn’t something your engineer team would relish. Your “No problem…” I do not recognise as being anywhere near reality. Your spectacles are rose-tinted.

  6. 117

    “…efficiency gains of switching to FTF…

    And which are these, exactly? Perphas it would be more accurate to say “the perceived efficiency gains imagined by some to be associated with switching to FTF…” and add “…or the bald agenda of either “harmonization” for its own sake, assuming harmonization is a good thing, or the more sinister agenda of disadvantaging smaller entities who actually do most of the real inventing these days…”

    This second point is not insignificant. Let’s say a bunch of laid off engineers get together and start a product company funded by thier own money to build a revolutionary widget. They will use thier initial investment to prove the concept before seeking funding and investing further in things like filing a patent applications – after all, if they are unsuccessful, why go to the trouble.

    Assuming they ARE successful, have diligently kept records and can easily prove conception and diligent reduction to practice, they will have no problem under FTI establishing their priority dates if they don’t make it over to the PTO before the first wire is twisted.

    Compare that with the large corporation (X corp) from which the engineers were laid off. X corp has a well established patent department that can prepare and file a patent application before the donuts from a new product meeting get stale. They find out about the widget efforts and run over and file an app based on some other work being done by the engineers old team. The guys that are still there don’t really understand the invention so well or how to reduce it to practice, but their manager instructs them to prepare a patent application with claims to the widget and file it.

    The result under FTI, is that the laid off engineers make billions (without having to resort to writing a program that skims pennies off of banking transactions, selling pet rocks or Jump-to-Conclusion mats). The result under FTF is Lumberg-esque, repugnant, unholy, and downright un-American.

  7. 116

    Clearly professor Keiff doesent realize how bad the situation is. With kaposed elimination of initial document disclosure program and nothing in the legislation to reverse this large scale human advancement has been halted because the new technical perfection makes the master conciever inelligible to recieve patents inessence shutting the office. Ide like the whole process reversed by forcing them into compliance with human advancements promotion as there required focus This means recognizing and speeding top marketable patents out the door and with federal funding if nessary granted through the uspto office.

  8. 115

    Ken, the number of patents is closely related to value. If the patent bill passes and weakens the system, the corporate bean counters will notice. Fewer patent applications will be filed and more inventions will be kept secret, especially in view of the new prior user right.

    Startups will try to adapt, of course. But the smart money will not back them until they have received strong patent protection, not based on potentially strong patent applications. Funding delayed is funding denied.

    So, don’t expect patent application to increase. They will not.

  9. 114

    I think your missing the basic situation here you have 275000 trash patents per year you have 200 valuable patents per year. likley considerably less in 2004 to 2011 like 10 because I am limiting persons stealing patents by conversation restrictions and lack of public contact. Now then of the 200 good patents before 2004 all of them are now disputed under this system what do you think the odds are that one is the first thefter and one is the second thefter. Close to 100 percent certain I would say.

  10. 113

    I would tend to disagree on the reason that the US has angel and venture capitol startups and there is none in other countries. For one reason it was invented by myself here and another is weve had the four master inventors myself being the last in this country producing the ideas needed for investment.

  11. 112

    im pretty sure I created this fairy tale as a defense mechanism as an infant its been run back in time like everything in this corrupt system. Clearly were entering a sickening new low in the american justice system with your scarcasm considering the truthful circumstances. Your in with the puppy tortures now.

  12. 111

    short-sightedly clinging to whatever protect their shallow, personal interests.

    As opposed to short-sightedly clinging to whatever protect their deep personal interests, which I would posit is an even greater problem with getting people to think that affects most people posting here.

    The shills are not here to think or reason (beyond that which is absolutely necessary to defend their views).

  13. 110

    Thank you. I appreciate it when people at least start to think, instead of just short-sightedly clinging to whatever protect their shallow, personal interests.

  14. 109

    The only way to insure equal access of all citizens to parent granting is keeping fees low and methods of IP loses to the true inventor at zero. Anything else destroys the incentive to create and violates cival rights to a patent. The proposed legislation does little to improve this and quite a bit to make the situation whorse. If they need revenues increases they need to look to general fund or additional fees on money making issued patents.Obamas big problem is if its your good idea he wont make it americas best plan and with his ideas we have predictable stagnation.

  15. 108

    First to file? That’s innocuous compared to the USPTO fee proposal.

    The USPTO is the ONLY US Agency that requires special accreditation to represent clients. An attorney can brief the US Supreme Court, but needs special testing and approval from the USPTO alone, to prepare a patent application for the USPTO.

    If that’s not enough, the do-gooders at the USPTO now want to improve US competitiveness by setting and keeping their own fees.

    So, in the USPTO we have, a) a 100% monopoly to issue patents, b) with sole pricing discretion, c) deciding who they will work with.

    If this was anywhere else but the US Government, the antitrust forces would be howling.

  16. 106

    Since the PTO rules that give you what…20 hours to examine an application, have up ’till now proven the adage : Haste makes waste… I find what ever it is you are talking about to be refreshing. Please don’t abuse the program, but use the time to generate clear and articulate office actions and fairly consider the applicants arguments. I think fewer turns of the crank will result along with a real reduction in the overall backlog.

  17. 104

    Its important to realize that progressive patent reform has nothing to do with the pile of trash set for approval. With reform in its present form we just contimue to stagnate.

  18. 103

    what really bothers me is that congress,oboma ,news comentatores and patent reform comittee all seem clueless on the issue of new job creation and the direct connection to progressive patent reform. They cant seem to find the least connection between the two to reduce unemployment and renew economic recovery just pure stupidity I guess.The problem is no one will aparently tell them about it either.

  19. 102

    The patent office should be operated as a court with the power to incarcerate in certain patent related circumstances especially concerning intimidations and IP thefts against inventors.the regular courts are to overcrowded 15 years is to long for decisions in present litigations to maintain the incentive to create.

  20. 101

    The reality is they started with 100 no good ideas and ended up stealing five good ideas from me.

  21. 100

    Its really hard to find pitty for these individuals if they dident cut the true conciever out of the deal they wouldent have the large R+D costs its the fault of there own greed and stupidity! Rule one always call in the master inventor it saves oddles of money.

  22. 99

    The reality is only one concieved it the other is trying to steal thats why we need the mccaine plan with four methods of inventorship determination to perfect the system.In awarding the patent to the wrong inventor you destroy the incentive to create in the correct inventor.Yes totally anti patent system because it will shut down as its doing now due to putting 8000 or so top patents in the wrong name.

  23. 98

    Hey, Les, unless the law has changed, Mr. March 3 could still win on attorney diligence alone — provided he retained drafts.

    You do that, right?

  24. 97

    “The big problem with the bill is not first-to-invent vs first-to-file in the “two simultaneous inventors” situation that you discuss. That involves 200 patent applications a year — as irrelevant as a thing could be. I don’t understand why so many supposedly-smart people are focused on such a trivial thing.”

    Under the assumption that I am one of those supposedly-smart people of which you speak, lemme splain:

    First to invent scenario:

    Inventor A calls patent lawyer to inform him that he invented cold fusion on March 3, 2011. Patent lawyer says great, we can get you a patent for that come on in and tell me about it and I’ll draft an application and file it for you. Meeting is held on March 4. Attorney worked diligently and files application a week later one March 11,2011. August 17, 2020 a first office action arrives rejecting all the claims as anticipated by another application filed March 10, 2011. Attorney calls inventor and says, hey can you prove you invented on March 3? If so, great, we swear behind, if not, oh well document your inventions next time.

    First to file scenario:

    Same as above except no phone call and Attorney gets sued for malpractice for taking a whole week to prepare and file the application.

  25. 96

    Hay patent girl ive got allot of patents on file published if you take them on consignment I am looking for foreign filing partnerships we can see if your fantasy land system can deliver an issuance.If not youll know the system is corrupt. This is usually the point where no paralegal or attorney in his right mind will invest time into a corrupt system such as this I would expect the same from you if your a system practicioner consignments are a no no.

  26. 95

    IANAE, you might want to actually listen to some of the folks here who are presidents of startups and who have filed reports.

    For example, one president described a product that took years to develop, and that entailed multiple dead ends and new discoveries along the way. In the end, one of their original ideas panned out, but with the aid of some of the other dead end research. Had they filed on every promising avenue, they would have had to file 100 patent applications. But, because they could wait to find out which worked and how to do it properly, they ended up with only 5.

    The project was not cheap, and was affordable only by not involving patent attorneys until they had “worked it out.”

    Even with drug companies I see them struggle with a patent system that all but requires them to file before they have working human examples. They have no valuable patent rights, but their preliminary work is now disclosed.


  27. 94

    I’m OK with you maintaining your current climbing practices, Max.

    Kidding, of course.

  28. 93

    Im afraid ive seen far more corruption in this system than you may ever immagine and I am trying to straighten it out. Your fantasy land may be an illusion of honesty that does not exist the reality of the situation when large amounts of money come into play is the potential of corruption and when the incentive for corruption is large the likleyhood is larger thats why we need the change to first to file immediate novelty check and no adittions after the fact.

  29. 92

    Actually, one of the amendment proposed to HR1249 today actually requires an analysis and report that FTF has a positive effect before it may become effective. How quaint.

    Page 22, after line 16, insert the following new
    2 TIVE REPORT.-Notwithstanding any other provision
    3 of this Act, the provisions of this Act and the
    4 amendments made by this Act shall not take effect
    5 before the date on which the Chief Counsel submits
    6 a report under paragraph (3) stating that the overall
    7 effect of the elimination of the use of dates of inven-
    8 tion in determining whether an applicant is entitled
    ·9 to a patent under title 35, United States Code, will
    10 be positive

  30. 90

    What safe guards does the european system have against fraudualnt previous art additions after filing of a patent. If its not in the public records prefiling then how would the filer or office know that it actrally was concieved previously to there filing. espenioge theft through interoffice internet or other leaks could have occured defeating the true inventor what guarantees are there that unrecorded previous art actually existed and was not fabricated to defeat the patent for free usage or steal the conception for manufacturing in that country.

  31. 89

    I think this is likley not true depending on how marketable and large scale of an idea you have the more likley you are of being denied a patent due to coats to consumer and lost jobs to business they will just use unrecorded previous art referances or other methods to block a patent issue.

  32. 88

    What if the harm FtI does to the national economy is greater than any harm it does to startups?

    You have assumed that the harm is in opposite directions and would be on opposite sides of a balance.

    Typical shill.

    The fact is that the harm is to both and both are on the same side of the balance. Truth is, people do know that the small firms hire more workers and provide more of a benefit to the national economy.

  33. 87

    Patent theft? It’s still available for novelty in the EPO, just not obviousness. Presumably, stealing another’s invention would be a novelty problem…I don’t get your comment.

  34. 86

    Good, isn’t it, Macho FtF? Do you think it might help, to get FtF past the US Congress?

    Where exactly was I derogatory? The Big Corp sponsors of the Bill want a system that rubs out 2nd filers completely, don’t they?

  35. 85

    A totally non-legal comment:

    Notwithstanding Max’s derogatory usage, I kind of like the concept of the USA being a “Macho FtF” jurisdiction.

    It’s appealing, in an original Hawaii 5-0 kind of way.

  36. 84

    Long and expensive R&D.

    What are you saying, exactly? That small entities should get a longer patent term?

    The patent system doesn’t owe anybody a marketable product.

  37. 83

    This is yet another method of patent theft or stolen usage needing to be delt with in new legislation immediate novelty check is the only way to prevent post knowledge fraud insertions of alleged unrecorded previous art.

  38. 82

    Long live the Precautionary Principle. Best take no risks. Europe knows it well.

    Except that I think, Ned, your premise is flawed. Just because nobody “knows” is not enough to establish “No reason to change”. Nobody “knows” I will fall off, the very next time I go climbing extreme routes, solo, without a rope. There is a very good reason to change my behaviour though.

  39. 81

    Cy maybe you could talk senator kyle into reading patently-O instead of quinns blog patent prospector? He is totally and possibly corruptly out of touch with patently-O and the reality of the deficiency of the legislation as well maybe congress to. Quinn is into illegal cival rights violating censorship of opposing views so the other side of the story is suppressed.

  40. 79

    No Cy not Dr. johnson although if he had anything to do with medical innovations I was likley involved I did all johnson and johnson products Mrs Johnson was my preschool driver. I need help from congress in the form of perfected legislation. And I need an intellegent president who can see the need to fund my worlds top inventions to produce new jobs. Of course the private sector isent helping at all some of these new philanthropists that are having guilt trips about porking me could at least contribute in the form of reinvestment but no so far just greed and denial.

  41. 77

    Ned wrote: “FTF really harms startups”.

    Even if that is true, we still have to balance whether the cry “Do no harm(to startups)” trumps every other consideration.

    What if the harm FtI does to the national economy is greater than any harm it does to startups?

    Trouble is, nobody knows which is the greater harm and, for as long as that is the case, this debate is set to run and run.

  42. 76

    So, really, it’s neutral to all parties on average

    False. You just finished stating that the large conglomerates already use that system. That “already use” is a large adavantage that you silently slip by. You also ignore the benefits of the current system that afford to allusers – but mostly to actual inventors rather than the conglomerates.

  43. 75

    Because while it is fairly neutral to international filers, the main backers, FTF really harms startups and anyone else relying on patent protection to protect long and expensive R&D.

    It’s not “fairly neutral to international filers”, except to the extent that they don’t have to change what they already do. But that’s irrelevant, because the start-up garage inventor won’t be accustomed to the patent system either way, and he’ll simply rely on counsel to do what is required.

    In terms of rights, this isn’t about whether people file abroad or not. It’s simply about dates. Both the start-up and the international conglomerate are equally likely to be on either side of the invented-first-but-filed-second coin in any particular case. So, really, it’s neutral to all parties on average, even though it will obviously affect individual cases.

  44. 74

    Because while it is fairly neutral to international filers, the main backers, FTF really harms startups and anyone else relying on patent protection to protect long and expensive R&D.

    Knowing this and still proceeding lets one draw certain conclusions about the proponents.

  45. 73

    The latter point, about dates, is really not a point in favor of the patentee, now is it?

    Logically, no provision that decides as between two potential patentees could possibly favor both. The important question here is which way we think it’s best to decide the question. Surely it’s at least more convenient for both parties that they can look at a document and immediately see as of what date it is effective prior art.

    More to the point, why do people insist on presenting the question of “does A get the patent or does B?” as having an anti-patent-system aspect?

  46. 72


    Everyone knows that FTF is bureaucratically more efficient for patent offices.

    The latter point, about dates, is really not a point in favor of the patentee, now is it?

  47. 71

    Many US patent attorneys find it hard to grasp why the EPC allows the disclosure content of earlier-filed, but not published till later, EPO applications to found novelty attacks but not obviousness ones. I explain the logic like this.

    Find the date of the claim. Find what was available to the public the day before. Decide whether the claim embraces (to use the term currently in vogue) anything obvious. Patentability done. A novelty provision is not needed, right?

    Wrong. The novelty provision is there to adjudicate between rival contemporaneous independent filers, none of whom have derived, and none of whom could have known the content of the filings of the others.

    Shall we give them all overlapping patents, so the public can be intimidated by all of them? Not very attractive.

    So, we sort them out using a novelty concept, to give each of them as much as they deserve. First to file gets everything that was not obvious. A later filer gets everything that is i) not obvious and ii) novel over the disclosure content of all those ahead in the filing queue at that particular PTO/jurisdiction. Given that these guys are independent of each other, there will usually be good quality novel stuff still left in each of their filings, even if their broad conceptual claims lack novelty over the earlier filers.

    An unforeseen benefit of these provisions is that over the years of operation of the EPC, since 1978, the distinction between novelty and obviousness has just got sharper and sharper.

    I do see problems ahead, in perpetuating 35 USC 103 provisions, to create a merciless First to File landscape, which allows obviousness attacks based on any later-published PTO filing, even one that was filed just one day earlier than the claim in view.

    To leapfrog over ROW FtF and adopt a “Winner Takes All, 2nd to file gets nothing” macho version of FtF, which no other country in the world practises, strikes me as unnecessary and over-hasty.

  48. 70

    All this hand wringing about FTF. Any company that files globally has effectively had to operate with a FTF mindset anyway.

    One thing I wish the bill would have done is harmonize the US with the ex-US ideas regarding unpublished prior art (e.g., in Europe, it’s novelty only prior art). It’s never made logical sense to me that an inventor is aware of all prior art pertinent to his/her problem or field of endeavor, when it’s unpublished. But no. We’ll continue to be different there as well.

  49. 68

    Puppies have no commercial value to them insufficient intelligence although some of them would gladly torture them to extract the information to. The apple wouldent exist without my great great grandfather george the outlaws killed him for the carriage invention and his other businesses.

  50. 67

    This is very true Cy the thieves like stealing ip like stealing candy from a baby I had thousands stolen as a child due to lack in protections in the law. My great uncle Albert Einstein cryed at the thought of how badley they would cheat me and how lucky I would be to survive. They murdered him to to shut him up about murdering my grandfather delbert the one the four master inventors responsible for the creation af all we have.

  51. 66

    Hi Paul, can you re-read your offering above.

    Did you really mean “same”?

    Did you really mean to say that there is “greater uncertainty” in Europe? The words you use after “uncertainty” suggest to me that you intended “greater certainty” or “less uncertainty”.

    But Dennis threads are full of surprises.

  52. 65

    Just for the record I have 40 years of experience with first to file, working in Europe as I do, and so do my several thousand colleagues in France, Germany, Italy, Spain, Holland, Belgium, Sweden and other major industrial nations. On the whole it is a workable system, and you have exactly the same issues as we do as to when and what to file. In both systems there is the same incentive to file quickly, but we have somewhat greater uncertainty because the filed subject matter has a fixed and definite date as do the references that can be cited against us.

  53. 64


    A helpful hint – hit the “reply” link. Then hit your refresh button and hit the “reply” link again – sometimes a scond such hit is required for the software to recognize the actual place you want to post a comment.

  54. 63

    The board didn’t thread my reply in the right place, but just stuck it at the end, thereby robbing it of all meaning!

  55. 61

    Malcolm, you are of course right that a second inventor’s patent is more secure.

    But the real question still is why is it so important to give the second inventor the patent?

    The obvious answer is that a FTF system is bureaucratically simple and more efficient. The counter argument is that FTI provides more reliability to the startup or to the introducer of new products.

    Which is more important to society?

    Shouldn’t the answer to this question be determined by resorting to the fundamentals? What is the whole point of a patent system?

  56. 60

    Now we are talking, Interference. We are not going to concern ourselves with any consideration of cost vs. benefit. If the fly annoys, we pull out the big guns and begin shooting. Bang! Bang! Bang! goes the cannon. The fly is destroyed. We got him. That is all that matters! The fact that we destroyed our house and the whole neighborhood in the process is of little concern.

    I am always heartened when I hear arguments from extremists. These are the folks, after all, who form the legions of revolutionaries that are constantly frothing at the mouth to overthrow society to implement their own views of utopia. We recall, that they even fought each other in Barcelona during the Spanish revolution when the anarchists and communists fought each other over purity, while ignoring the fascists for a moment.

    During the French revolution, Robespierre went out of his way to guillotine his fellow revolutionaries who were not as radical as he. Daton fell to the blade.

    So, yes, Interference, I am heartened by your zeal. Heartened.

  57. 59

    More like they should do something about alot of things wrong in this system like putting all the patents in the wrong name.

  58. 58

    Every dirty trick in the book is there game plan since I was six months old beginning with relatives then working into strangers about 8000 instances with varing degrees of intimidation and trickery over 57 years. You can immagine the terror of being a walking bank of ip. Yes the most dastardly reward being death witch my three masterinventor grandfathers recieved for there brilliant conceptions from 1803 through 1953. They concieved every item in this time period beginning with fire and metal.Of course you can immagine the size of the mob of thugs that my inventions in the time period 1953 to present has accumulated a small army against one some would say not very good odds

  59. 57

    Thats very true ben my 3 grandfathers the worlds only masterinventors were all murdered for there intellectual property and myself the only living masterinventor is likley next without security provisions for startup inventors. Human advancement can ill afford to have this precious resourse lost not to mention that this could be painful to myself also and we loose the hi federal too.

  60. 56

    Thats right ned there the incumbents so they control a monopoly on previous art and trade secrets because they cut the true inventor out of the deal in the first place. Now they have little incentive to coperate with the true inventors they porked so this is where refusal to deal legislation becomes nessary to continue human advancement coupled with patent reissuances for what they stole.

  61. 55


    My problem is that I am/was operating on anecdotal and subjective evidence. I have one client which has a bunch of pending applications, and most of its apps had a competing app filed within a month or so before their filing date. For other clients, it is rare.

    The closest thing that I can think of with U.S. applications might be to contrast the number of 102(e) rejections to 102(b) based on the publication of patents and patent applications. But, I think the results there would too high. Maybe though, if someone were to look at all those 102(e) rejections, and see how many of them had a reference that had a priority date of less than a month, less than two months, etc.

    Unfortunately, that would take a lot of work (even assuming sampling), which no one has with Patent Reform now suspended inches above the House floor.

  62. 54

    One of the best things about the new post grant procedure is although there is about 275000 nogood patents. there is likley to be little oposition to them because there worth nothing. Of the 10 to 150 good ones that they will try to steal there not likley to be filed at all in the first place because of my lack of customers and 40 different methods of stealing patents I think they need a provision for seeking psychatric help for inventors even considering filing in this system they refuse to change for the better.

  63. 53

    With kapos designing the new post grant opposition its likley to be full of expensive attorney oriented litigation to increase the costs and make big business the winner remember he is the worst one for expensivaly wearing down the opposition as an attorney for IBM exactly the wrong man for the job!

  64. 52

    This argument about few interference is BS. There are also few head on car collisions. In fact we spend billions of dollars protecting ourselves from head on collisions through bumpers, crumple zones, air bags, seat belts, concrete medians, road dimples, and on and on and on.

  65. 51

    Didn’t Aesop write something about this? Involving golden eggs, perhaps?

    I agree with Mr. Thomas. We really should do something about IP theft via the “Invent or Die” technique.

  66. 50

    The bill is improperly named. It should be titled the “America Kills Inventors Act”.

    That’s a good start. But I don’t think it has quite the emotional wallop that you’re looking for. How about “The America Kills Inventors, Small Children, and Puppies While Outlawing Apple Pie Act”?

  67. 49

    Now you’re talking Ken. Opposition works great in a jurisdiction, like mainland Europe, that does not run on due process and adversarial English common law. But how would it fare in the USA, with no English Rule on legal costs? Oh my, I think I’m beginning to imagine the train wreck.

  68. 48

    The First-to-File system coupled with the post grant opposition will be a boom for patent prosecutors. There will be so many terrible patents filed that will be easily attacked in post grant procedures that we will have patent ACES. Prosecutors successfully kill 5 patents. I have already killed one in my career through the old ex parte re-examination procedures. I think it will be fun. I mean take organizations can be established that are dedicated to destroying a single patent portfolio. For example, let’s say that an environmental group doesn’t like an oil company . . . well simply attack the patent portfolio. That way a competitor that is liked by the group will be fostered. I think they ought to up the anty. Let’s say that a patent is successfully attacked. How about attorney fees for the prevailing party? I mean this could really become interesting.

  69. 47

    First to file is just one of the many problems in the bill.

    The bill is improperly named. It should be titled the “America Kills Inventors Act”.

    Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help in the fight to defeat this bill should contact us as below.

    Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet small entities create the lion’s share of new jobs.

    Please see link to for a different/opposing view on patent reform.
    link to

  70. 46

    The term favoring the incombants is a bit of an understatement concerning this legislation. Promotion of fraud and theft is more like it considering the text and omissions. Aparently the new pto arbitration is anti inventor in reguards to business methods since they involve the creation of new jobs this provision needs to change to probusiness method since revealing what it is then having it stolen will allow usage for free obviously an ip theft.

  71. 45

    Invent or die is the most dastardly method of ip theft

    The rationale presumably being that if they cut you open they can get all the inventions at once?

  72. 44

    This legislation compared to what it could be is a bitter defeat for human advancement through invention and the cival rights of inventors. Its whorse than that because we now have unequal access to debate the issues both in congress and through media through sensorship and lack of money to afford lobbiests on the part of the indegent very dispicable and disgusting.This issue must be placed on the ballot next election to stop this although they will probably try to block this as they used the supreme court to block equil airtime for televised political comercials.

  73. 43

    You wonder, Mr Hayden, how to calculate how often inventors, independent of one another make about the same invention at about the same time.

    Well, as you know, there is a special section in the EPC to deal with earlier filings for the same invention, that are not prior publications. We call it Article 54(3) EPC. It is available for novelty attacks but not for obviousness, so only novelty-destroying earlier filings are citable. So we can be sure there is overlap.

    What if I were to suggest that 20% of all EPO FAOMs has an Art 54(3) cite, and in less than half of them the earlier filing is from the same source? So, we can say that in 10% of all filings, an effective mechanism is needed, to sort out which one of the rival filers should get the patent grant Unless, that is, the plan is to give every one of them an issued patent.

    Would that help?

  74. 40

    dont forget there is 40 different methods that inventors are cheated of there intellectual property and not correcting any of them will lead to exploytation of the weakest or missing provisions. This legislation is grosley incomplete and inperfect in its present form.Ive had 6 to 10 thousand major and minor intellectual properties so far uncompensated for in the last 57 years using every dirty trick in the book.

  75. 39

    The U.S. Patent and Trademark Office favors the first-inventor-to-file system, and it would not do so if it expected the new system to “exacerbate the patent backlog.

    Maybe to be a bit cynical here, but the person who determines this policy, Director Kappos, just coincidentally happens to have been a long term employee and officer of one of the major proponents of the legislation (IBM). And, keep in mind that he was in a position to most likely to have been working for passage of this legislation for at least three years before being confirmed as director. Yes, he could have come to his support of the legislation completely independently of his work at IBM and in supporting the legislation before he was selected to head the agency. But, I don’t find that all that probable.

  76. 38

    Okay… so you somehow have it in ur head, which is right beside a statutory bar in ur arse, that the corp being statutorily barred somehow affects the point MM was making that HIS rights are pretty clearly delineated and he doesn’t have to go through legal shinnanigans to be able to sue (and possibly win) for infringement?


  77. 37

    Let me suggest that Beem is practicing what he is condemning in his “Patent misinformation runs rampant”. For one thing, he dwells on interferences, when the real issue in near simultaneous filing is prior art and grace periods, and whether or not the second filer but first inventor will get a patent too – since the first filer/second filer most often will already. He says that grace periods won’t be lost, ignoring the total rewrite of section 102. And, he claims that patent reform is Constitutional, even going so far as to quote the relevant portion of the Constitution, without explaining how non-inventors are prevented from acquiring patents, given the rewrite of section 115 and the elimination of 102(f), in the pending legislation.

  78. 36

    Agreed, an wholeheartedly so.  They are rigging the system and feathering their nests.  So the US patent system ceases to function for startups.  Who cares, certainly not the established firms.

  79. 35

    Malcolm, you've got to be kidding.  There are so few interferences as to make this is strawman issue.  It is not a serious problem, even if you consider it a problem. 
    One does not throw a system that has so many demonstrable advantages into the ashcan over strawmen.

  80. 34

    The 200 a year figure is not of near simultaneous invention, but rather, of interferences. The universe of near simultaneous inventions is quite a bit larger, but I don’t know how you would calculate it.

    The problem is that interferences have to be triggered. It isn’t magic that two applicants will have identical claims. Rather, the junior party will copy a claim from the senior party, and then make sure that the USPTO knows this.

    I would suggest that far more common is the situation where the published disclosure in the putative senior party would tend to anticipate the junior party’s claims under, say, 102(e). So, the second filer then needs to get behind the filing date of the first filer to overcome the first filer’s publication as prior art. But, importantly, note that the claims are most often quite different between the two applications. And, indeed, the second filed application may not contain sufficient disclosure to support copying claims from the first filed application in order to trigger an interference. Or, more likely in my experience, the second filer just wants to get his patent, and doesn’t care whether or not the first filer does too, and, esp. given the costs of an interference.

  81. 32

    I think that that is a good part of it, but in context.

    At least with the software/electronics firms that are behind this, I would suggest that weakening the patent system is precisely what they want. They typically do not sue, but are, rather, sued for patent infringement. They mostly do not sue for patent infringement because their major opponents will invariably have blocking patents. So, they cross-license. And, in cross-licensing, the size of the pile is important, and whether or not there is 102 art against any asserted patents. But with thousands of patents in their stack, finding good quality patents, with no 102 art against them, is very doable. Nothing in the pending legislation is going to impact this part of their strategy at all.

    On the other hand, they are quite routinely sued for patent infringement, sometimes by trolls, and sometimes by first inventors. This is quite expensive for them, because they often need to either defend or settle, and settling traditionally was at some portion of revenues (this later has changed a bit in the very recent past, but patent reform already had its momentum going by then).

    Think about the tradeoffs these companies are trying to make – $30-40 million in one-time lobbying costs, versus tens of millions of dollars a year in damages and legal fees (and their legal fees are often significantly higher than those of the plaintiffs because they are in bet-a-big-piece-of-the-company litigation.

  82. 30

    Courts should be a last resort and only allowable in situations of insufficient previous rulings or new arguments. We need the uspto to become the economical enforcement agency for dispute resolution also for disallowing business startups where a dispute exists one must be chosed until a final decision is made if two or more claim inventorship.This needs to be acomplished by use of multiple methods such as the mccain plan lays out.Actually the whole process is unnessary because the top inventions can be purchased on consignmenet from the master inventor for a reasonable percent.

  83. 28

    It should be recognized that the present proposal will not perfect the system. Everything important has been left out or botched and cobbled together. There is no inventor security provision so there is no protection for startupinventors against having there patents stolen by intimidation.Invent or die is the most dastardly method of ip theft yet is unadressed by present proposals as an example of the missing elements.

  84. 27

    Just so I know where you’re coming from, HPBL, where do you find a statutory bar in my hypothetical?

  85. 26

    Well Malcolm, I might start with a fact pattern that doesn’t have a statutory bar – hard to make any comparison with that thing hanging around.

  86. 25

    Filing prematurley or speculatively will not lead to the granting of a patent under the new system. Only the inclusion of will lead to recognition of new intellectual materials the formality of the kapos era perfection leads to another theft method in the system. Returning to initial document disclosure program is esential to retaining the incentive to create of small inventors without R+D deartments and money to hire expensive attorneys.Anything else violates there cival rights and prevents them from full participation in a capitalist free market system.

  87. 24

    And in your hast you left off an e and also neglected to notice that in MM’s hypo whether or not they have a patent or an application is completely irrelevant due, you guessed it, to a lack of interferences. MM will still get to sue (and possibly win) regardless of whether the corp has one so long as he filed first.

    NAL seriously, put ur thinkin cap on for like once in ur life.

  88. 23

    Hey guys I figured I’d just tell you about the new COPA program. Essentially what it is is where examiners like me get an ungodly amount of hours to work on cases compared to our normal cases (thus extending the backlog) in order to hopefully make average pendancy go down. Isn’t that an ingenious plan? Increase the backlog to move pendency around a bit! It’s kind of like poking a hole in the titanic on her way down in order to move the deck chairs around.

  89. 22

    It may do more than just that…

    But I went with a different rejection instead. The whole thing is 101’d anyway they’re going to have to redraft their claims from scratch. Wapanese filers, making my day since 2006. Why can’t they just hire an attorney to do the initial filing correctly?

  90. 21

    Would you like to rephrase your hypothetical?

    No, not really. But go ahead and rephrase it for me if you think it could be made more coherent for readers such as yourself.

  91. 20


    THat’s not so coherent – in your hast, you have set up the fact pattern as you own an issued patent, but you do not say that the corporation also has an issued patent, or whether they merely still have an application that was filed after the statutory bar time – thus easily defeating their patent.

    Would you like to rephrase your hypothetical?

  92. 19


    This is covered in the Infringers’ Handbook, page 173, paragraph 4.

  93. 18

    I have never heard of a coherently argument made by a proponent of FTF on why it benefits them over FTI if they are the patent owner

    Let’s see. I own an issued patent. Under first to file, my rights as the first filer seem rock solid versus those of the corporation who filed 13 months after I filed my application because … I filed first. Under a first to invent system, the chances are pretty good that I’ll be facing a long, protracted legal battle over who invented first, especially if I sue that corporation.

    So there you go, Ned. Now you’ve heard the coherent argument.

  94. 17

    You could. If you were motivated to unnecessarily drive up the applicant’s cost and delay, that is. But why would you want to do that?

  95. 16

    As David Boundy points out, the US will be a big loser with this patent bill. Big.

    So, why has harmonization been so aggressively pushed for so long by major US companies? It really gains THEM no apparent advantages, really. The truth must be that they actually benefit by the harm it inflicts on startups.

    I think this to be true in fact, as I have never heard of a coherently argument made by a proponent of FTF on why it benefits them over FTI if they are the patent owner. It surely benefits them as infringers.

  96. 15

    Me, I can’t understand this “200 a year” figure for simultaneous invention. Is it the number of interferences actually declared. Is there not a difference between the numbers actually declared and the number of interferences extractable from the flow of filings at the USPTO, if there was (say)a bounty payment offered for every one brought to book?

    Patents are a restraint on free trade. To let all interfering Applicants have a patent on the overlapping subject matter (ie by not declaring an interference) multiplies the degree of restraint.

    There are ever-growing numbers of “interfering” patent applications, as the world gets smaller and competition gets ever hotter.

    Just because the USA has dominated the useful arts and has had First to Invent does not prove that FtI was what delivered the dominance. After all, heart disease is suffered predominantly by speakers of English, but it’s not the speaking of English that causes the disease (I sincerely hope). I can think of other explanations, much more credible.

  97. 14

    Mr. Beem —

    You’ve kind of missed the point, and I can’t blame you because there’s been a lot of point-missing by the proponents.

    The big problem with the bill is not first-to-invent vs first-to-file in the “two simultaneous inventors” situation that you discuss. That involves 200 patent applications a year — as irrelevant as a thing could be. I don’t understand why so many supposedly-smart people are focused on such a trivial thing.

    The problem is the loss of the § 102(a) prong of today’s grace period.

    Don’t ever take legal or statistical advice from the U.S. Patent Office, especially not on estimates of private sector effects — remember that they lost five rule cases in 2007-09 because their private sector effects were off by a factor of 50. Here, the Canadian data is very clear — the earlier “use it or lose it” deadline of this bill will force filing rates up by about 25%, about 50-60% by U.S. inventors. Most of the new applications will go abandoned, before they yield issue or maintenance fees. A recipe for disaster.

    The unique American grace period–especially § 102(a)–is what makes U.S. innovation so much different than any other country’s. Why is there almost no venture capital or angel investment to get startups started elsewhere? The patent system. Why does the U.S. dominate almost every area of technology? Our patent system. (The exception — stem cells — proves the rule — we had to outlaw an area of technology to let anyone else have a chance.)

    Focus on the needs of startups as they seek financing from angels and VC’s. That’s where the big economic effect will be — it’s almost a quarter of today’s economy. And that’s what the proponents of the bill have ignored.

  98. 10

    If the only support for that motivation is a reference that is not prior art, then no, you shouldn’t use it. You should come up with a rationale that is actually supported by what was known to the relevant public at the time the invention was made.

  99. 6

    If you have specific examples of serial reexaminations please post the patent numbers. Thanks

  100. 5

    Guys I have a quick question about motivation. Let’s just say that I’m going to use the ol’ TSM test for a 103. Let’s also say that there is a reference which cannot be used as 102a/b because of dates and cannot be used under 102e because it is a WIPO pub that did not publish in english under whatever article.

    The question is this: In such a circumstance can I lift a motivation from that reference without making a cite to it? And moreover, should I?

  101. 4

    Professor Kieff, your objections to first-inventor-to-file are unnecessarily reactionary. The proposed first-inventor-to-file system will not discriminate against the “little guy,” because the “garage inventor” often can move faster and file more quickly than the large company. It is true that the world has emulated the U.S. patent system, but in this respect, the U.S. lags other countries, almost all of which have first-to-file systems. The U.S. Patent and Trademark Office favors the first-inventor-to-file system, and it would not do so if it expected the new system to “exacerbate the patent backlog.” Last but not least, the suggestion that a slow-to-file “little guy” will prevail with laboratory notebooks against a first-to-file large company in an expensive, complicated interference proceeding has little grounding either hypothetically or in the real world. In conclusion, Congress should act now to adopt the first-inventor-to-file system consistent with its Constitutional authority to promote the progress of technology by securing for a limited time to inventors the exclusive rights to their inventions. See Beem blog, link to, “Patent misinformation runs rampant,” link to

  102. 3

    patent leather;


    Did you know that a reexamination can cost the patent owners hundreds of thousands?

    Did you know that reexaminations disrupt the ability of a patent owner to license a patent?

    Do you appreciate that with the ability to stay anonymous, the same member can file serial reexaminations keeping a “bad patent” permanently under reexamination?

    Do you have any idea just how abusive reexamination practice can be to patent owners?

    No doubt there are bad patents, but without having to expose themselves by identifying the requestor, the system as is is prone to abuse and it is abused.

  103. 2

    I read the first two installments of this then stopped reading. A bunch of nonsense. Consider quotes like this: “A patent should be challenged in court, not in the U.S. Patent Office” and he criticizes the USPTO reexamination procedures advocating that they should be litigated in court instead.

    This guy must have little practical experience representing small companies. Consider party X that has a “bad patent” that interferes with party A’s business plan. It’s ridiculous to have to challenge this in court and spend $$$$ (especially since party A might not always have jurisdiction to file a declaratory judgment against X) when instead A can file a reexam and for about $5k have the USPTO issue a more fair evaluation of the patent. I’ve worked with a lot of small companies that without the ability to request reexamination, would have been out of business.

    I hope Congress doesn’t give this guy too much weight.

  104. 1

    I smiled at the content of the last essay, in which Professor Kieff repeats the calumny that filing prematurely and speculatively is what you have to do to prosper and prevail in a First to File regime.

    I repeat: If you make the mistake of filing before you have an enabling disclosure to file with your claims, a disclosure which does support the full width of those claims, you destroy your own patent position. Got it now?

    I gather from Professor Kieff that only in First to Invent USA can an inventor secure broad protection. Huh? Where does that come from, please?

    But the professor is right about one thing: it will take decades before users of the patent system in the USA, the PTO and the courts, have gained a proper understanding of how First to File operates in practice. Till then, I agree with him, an abundance of uncertainty.

    But hey, so what. An abundance of uncertainty is what you have now, right?

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