Is it really a First-to-File Patent System?
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With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction. However, was this really accomplished with the AIA, or was something else achieved? When most people think of a First-to-File patent system, they would probably think it means exactly what it says (the first person to file the patent application has priority). However, the 1-year grace period exceptions in 35 U.S.C. 102(b) seems to create a quasi or pseudo First-to-File system.
102(b) (1) reads:
- DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –
- The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
The language of 102(b)(1) could cause lots of controversy. Essentially if an inventor puts his invention or disclosure on the internet or discloses it any public way, he/she has one year from that date to file a patent application, and the disclosure would not count as prior art against the inventor. However, the disclosure would count as prior art for a later inventor, which seems to suggest a First-to-Invent system. This creates an incentive for inventors to disclose inventions immediately so as to bar other inventors and receive an early priority date. I expect litigation about this topic and the many situations that could arise.
Judge T. John Ward, Sr. Steps Down
- Judge Ward, who is credited with turning Marshall, Texas into an unlikely hotspot for patent litigation, will return to the practice of law at Ward & Smith. Judge Ward will practice law alongside his son T. John ("Johnny") Ward, Jr. During Ward's tenure, the Eastern District also developed a reputation as being a haven for patent holders, particularly nonpracticing entities, or "patent trolls." Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas? [Link]
WIPO's Statistical Country Profiles Tool
- Statistical country profiles provide information on patents, utility models, trademarks and industrial designs. They cover different dimensions of IP activity, including incoming and outgoing filings, the share of filings in different technological fields, total patents in force, and the use of international IP systems by applicants. The filings and grants are divided into the following categories: "resident" – domestic filings; "non-resident" – filings coming in from other countries; "abroad" – filings going out to other countries. The statistics also associate IP activity relative to countries' economic performance. For example, users can compare the trend of a country's total IP filings – defined as the sum of resident and abroad filings – with that of the country's GDP. Furthermore, they indicate the country's global rank for each indicator. [Link]
Upcoming Events:
- Houston Intellectual Property Law Association (HIPLA) will be holding its Annual IP Institute in Galveston, Texas October 6-8. The Institute will feature topics such as: Do's and Don'ts in IP Licensing, Due Diligence and Ethics in Acquisitions, Patent Prosecution Under the New Cases and Inducement of Patent Infringement after Global Tech Appliances v. SEB. The guest speaker will be Lord Justice Robert "Robin" Jacob, Court of Appeal of England and Wales. [Link]
- The 17th Annual Advanced ALI-ABA Course of Study for the Corporate Counsel and the Private Practitioner: Trial of a Patent Case will be held in Chicago October 13-14. Guest speakers include: Judge James Holderman, Judge Liam O'Grady, Scott Coonan, James Leeds, and many more individuals. (Patently-O readers can get 30% off with discount code CT017POB) [Link]
- The 4th Annual Inland Empire Intellectual Property Institute (IEPI) will be held in Spokane, Washington on October 14th. The program will cover: developments in patent prosecution, patent litigation, copyright and trademark; ethical considerations for IP attorneys; patent reform and its impact on the practicing attorney, and many more topics. Guest speakers include: David Powers, Nancy Kim, Shirley Anderson and many other individuals. [Link]
- American Conference Institute will be holding a FDA Boot Camp Device Edition conference on October 25th-October 26th in Chicago. (Patently-O readers can register with code PO 200 for a discount) [Link]
- Licensing Executives Society (LES) will be holding their annual meeting on October 16-19 at the Manchester Grand Hyatt in San Diego. Guest speakers include, Martha Ries, VP of IP Management, The Boeing Company and Barbara Dalton VP, Venture Capital, Pfizer. [Link]
- The University of Texas at Austin will hold its 16th Annual Advanced Patent Law Institute on October 27-28. The program will cover: recent developments in claims construction and claims drafting, cost savings in litigation, inequitable conduct after Therasense, and many other topics. [Link]
- IPMI is holding the IP Law & Management Institute on November 6th – 8th at the Rancho Las Palmas in Palm Springs, CA. Hailed as "One of the few programs geared to experienced in-house IP Counsel", the Institute is a CLE-accredited program designed to provide time-starved Heads of IP with the Opportunity to meet and network with their peers, learn from the best practices and validate solutions and services. [Link]
- IBC will hold a Standards and Patents Conference in London on November 16th & 17th. The conference will analyze the interplay between standards, intellectual property and competition law. There will be 28 speakers representing various organizations, such as, the European Commission, Mr. Justice Floyd, IBM, Qualcomm Europe, Nokia, GE Healthcare and Intel. (Patently-O readers receive a 10% discount) [Link]
- IBC will hold a US Patent Reform Congress Conference on November 18th in London. The conference will focus in the impact of the Leahy-Smith America Invents for the European practitioner, with expertise from the EPO, AIPLA, USPTO and more. (Patently-O readers receive a 10% discount) [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.
If they dont have a neutral appeals board at the uspto they need one waiting 15 years in the federal courts is inovation retartive the appeal should be resolved in 1 year or less to improve marketable title. Allowing previous injustice reissuances due to inventorship fraud should occur on new evidence submitted on expired patents
Other methods of evidencing have been used such as invention clusters of various types and proximus location of both parties to each other at the time of invention in dispute situations. The most credible of these arguments involve massive inventative genious related to thousands of inventions. Genetic fathers and grandfathers inventions and denial of patents to them are also another method of evidencing involving conspiracys. is there an attorney in the house.
If the true inventor did not file a patent application, in what tribunal does he have all the procedural sticks in hand to pull the invention out of the hand of the deriver?
I don’t know the answer. I do know that the situation was difficult for the “true inventor” to resolve under the current regime but that never seemed to bother anyone greatly.
Ya a big oops called no justice at all in the system. One of the biggest ones I am dealing with now is corrupt file insertions that have been occuring aperantly since 1960 They just run the database files back in time and add whatever they want to defeat the new invention. Where can you now get a paper copy of the entire data base and why are the Cd ones so expensive to indegent inventors
MM —
If the true inventor did not file a patent application, in what tribunal does he have all the procedural sticks in hand to pull the invention out of the hand of the deriver? Under what statute? Under what statute does he have any power to take discovery? The AIA doesn’t amend 35 USC 23 and 24 — oops.
When will some one notice that the system is still an unusable pile of corruption with fourty methods to cheat the inventor.
Lawrence, you just now noticed that maybe this isn’t first to file like the rest of the world?! I’ll cut you some slack because you’re not a practitioner yet, but you really ought add some patent blogs besides patentlyo to your reading list. Long before the AIA passed, plenty of people commented on the differences between the AIA’s first-inventor-to-file and the first-to-file provisions in the rest of the world.
Talk about simultaneously boring and pointless…
Is there a reason you feel compelled to comment so much without adding anything to the conversation?
C’mon, MM,, add or be quiet.
The March of the Quinnbots is simultaneously boring and pointless.
Paul,
It appears that you are mistating my point and still not answering my question.
“that’s fine with me” – shouldn’t be fine with you, because labeling the exception as creating a ‘first to disclose’ system is opposite your argument concerning “proponents and major supporters.”
As noted, you cannot have it both ways – and it should not be fine with you people want it both ways. If you are going to employ the logic of “what proponents and major supporters have labeled” something, then that logic defeats the notion that the exception is anything but a personal exception and thaqt independent invention defeats that exception. Where do you stand on the scope of the 102 exception? How are you employing the logic of “proponents and major supporters” in supporting your position on the meaning of the exception?
It’s quite easy to prevent such a result.
“Congress … does not alter the fundamental details of a regulatory scheme in vague terms or ancillary provisions–it does not, one might say, hide elephants in mouseholes.” Whitman v. American Trucking Association, 531 U.S. 457, 468 (2001)
Regarding WIPO’s Statistical Country Profiles Tool the link does not work.
It is interesting to note that it was not discussed before in this rather long list of comments, does this reflect the interest of US patent attorneys to use the PCT system? Looking over, say, IBM patent statistics I find far from all end up with a PCT filing, so my question is about genuine interest, not rethorics.
now add global immediate novelty check of ptos files and internet and you can issue at least conception or whole patent if correct provisional or non-provisional great system if I can get it by the corruption may take 30 to 300 years in congress I guess those unemployed can wait for new jobs that long.
combining live federal video recording and uspto transmission with live public television broadcast is even more credible with the audience as witnesses. Adding a 30 days notice of intention to file at uspto is even more credible if the invention is undevulged. That allows disputents to file at the same time identifing contested inventorship
No you need those federal employees as witnesses very credable in conjunction with immediate uspto video filing
Publishing shouldent be allowed its to easy to counterfit its a discredable method of evidencing compared to filing initial document disclosure. or step to the vidiocam at federal buildings then immediate recording at uspto
“I already was incentivized to publish before”
Reminds me of the still unanswered science fiction question (pertaining to enablement of any patent-defeating disclosure).
“There is no incentive to publish before filing under the AIA system.”
You say that, but I already was incentivized to publish before filing on a ground shattering invention related to cash registers and general purpose computers. And the law hasn’t even taken effect yet, its powers of incentivization are that strong.
Clearly, you are mistaken on this factual question.
Lawlrence Higgins is one of D’s students. And you should care about what he thinks about patent law because he commands the nation’s top patent blog frequently.
“Sure, if you want to call it a “first to disclose” system, that’s fine with me”
That’s quite the point – NO ONE called it a “first to disclose” system.
Which means that (according to your logic) any reading of the exception that would create a “first to disclose” system must be wrong.
Either that Mr. Paul F. Morgan, your logic is wrong.
So which is it? Is your logic wrong or is the reading of the exception that creates a “first to disclose” system wrong?
Or are you trying to have it both ways by not actually answering the question?
The easy, no-nonsense least-risk advice is simple: absolutely no disclosure prior to a filing. Why would an attorney even consider giving any other advice?
That’s a great question. Publishing first is what you do when you are effing up. It’s not something you do “strategically,” period.
Do people here not understand the meaning of “grace” in the term “grace period”?
It’s provisions like these in the AIA (the “Abominable Inane Act”) that give me nightmares and Excedrin headaches.
I’m sleeping like a baby. Are your clients completely clueless or what exactly is the problem?
That’s the serious hole that was poked in this proposed strategy (publish first, file second).
Who proposed this mxrxnic strategy and why does anyone care?
Your points miss the mark. This might be due to the nature of your expereience – and the lack of importance that experience provides to the traditional “grace period” of the US legal framework. I recommend that you read some of Ron Katznelson’s writings on this point.
And then I stopped reading.
Sure, if you want to call it a “first to disclose” system, that’s fine with me. I’m not an AIA author. But you don’t get any patent that way! [Which is why its proponents logically did not call it that.] Lets forget the semantics and look at the realities. All the first disclosure gets you under the AIA is a poorly defined and one-year-only grace period in which to file a patent applications in the U.S. [and maybe a few other countries that have a grace period like that for inventors]. That public disclosure also creates prior art against others getting patents, just as before. It blows your trade secret rights and business lead time, just as before. The difference from the present law is that a later filer will no longer be able “swear behind” non-bar prior art with an alleged prior invention date under Rule 131 which is rarely carefully checked by examiners or holds up when the patent obtained by that oath is tested in litigation. Nor can a Rule 131 declaration be used against prior art with interfering claims – that requires an interferece, in which the second to file wins the claims less than a dozen times a year these days. I.e., Rule 131 declarations do not determine who gets a valid patent on the same invention.
A great many “mights” there Anon. Could it that you are a “glass half empty” man, unduly pessimistic, while I’m “glass half full” but haven’t begun yet to appreciate Murphy’s law, that: What can go wrong WILL go wrong.
It is just that, based on my EPC experience, I remain optimistic.
Fair enough EG – we are paid to bring the options and the fallouts of those options to the client. The client reserves the fight to make the final decision. As it should be.
“How do you advise a client to “disclose” when the risk of that disclosure (without a filing already in place)”
Anon,
That’s the serious hole that was poked in this proposed strategy (publish first, file second). We don’t know what the answer really is until the courts speak, and that won’t happen for at least several years.
“Why would an attorney even consider giving any other advice?”
Because some clients might decide to take the KNOWN risk for cost/other reasons. The strategy I proposed has problems, but it isn’t completely off base (as others have even suggested this strategy before I did.) I’ve often advised clients about several options from best to least. Sometimes, they choose the least, knowing full well that it isn’t the best choice. Again, that’s for them to call/decide after we, the attorney, give them the options, with all the advantages/disadvantages.
MaxDrei,
Your points miss the mark. This might be due to the nature of your expereience – and the lack of importance that experience provides to the traditional “grace period” of the US legal framework. I recommend that you read some of Ron Katznelson’s writings on this point.
To your point 1, the problem is the inadvertent consequence that the law, as written, may have the opposite of the desired effect. That is, the law, as written, may actually dissuade people from disclosing. Combined with other aspects of the law that place greater importance on Trade Secrets, this inadvertant consequence is a legitimate concern.
To your point 2, the problem is that that might not do the trick. And then what? Poor Arthur simply does not get his patent because it was merely obvious in view of Bob’s independent invention. Bob may not get his patent, but neither does Arthur. If Bob is a well-established mega-corporation and Arthur is a limited-funded start-up, the end business result is quite clear (and quite not what the US community really wants).
I do not see anything wrong with your point 3.
As to your point 4, the problem again is the inadvertant one. If disclosing does not provide the protection, and is in fact an “invitation to disaster,” then disclosures will diminish and there will be no disclosures of A+x, since A will be kept under wraps.
Nice write-up EG.
But shouldn’t “should be interpreted” simply fall to well-established legislative interpetation canons (beginning with the plain words of the text)? Isn’t the problem here that the plain words of the text, given the well-established legislative interpretation canons, just does not say what the advocates of the alleged system say?
Isn’t this a problem, as Gene puts it, that the plain words provide a mere personal exception, and as one of the commentors puts it, such a mere “personal exception only” creates a powerful incentive for others to push the button on a MAD “Armageddon Scenario“?
After all, the established powerful companies do not need patents so much as they need to be able to control the game-changing nature of patent availability that others may have. If the 102 exception is so weak as to be useless, so susceptible to “independent” invention corruption, then who is the real winner with the painfully written AIA?
And isn’t a real practical problem one of risk? How do you advise a client to “disclose” when the risk of that disclosure (without a filing already in place) is an “invitation to disaster?” I am curious if the malpractice insurance carrier folks have been thinking about this. The easy, no-nonsense least-risk advice is simple: absolutely no disclosure prior to a filing. Why would an attorney even consider giving any other advice?
“More patents for everyone is the best thing ever, isn’t it?”
Nice logic jump there – clueless much?
New 102(b)(1) in the AIA is real “hot potato.” See my article posted on IPWatchdog and the comments in response thereto which show the diversity of views on how this provision should be/could be interpreted: link to ipwatchdog.com . It’s provisions like these in the AIA (the “Abominable Inane Act”) that give me nightmares and Excedrin headaches.
“Again, people like Bob are called… They aren’t going away unless…”
QQ QQ QQ
Pass the tissues (and get over yourself).
“which is the point here”
The point here, Paul, is the point that I say.
After all, I am the one making that point.
Will you answer my question? Or does my question make you uncomfortable? Was there, as you put it, a consistent description of AIA as a “first to disclose” system by its proponents and major supporters?
Don’t waffle – pick a side.
Michael,
A Video Cam? How about one filtered through a TV, would that work?
Some points:
1. A patent system is supposed to promote the progress. Getting A published, and A+x published, is what the AIA does. What’s wrong with that?
2. Don’t see why Bob’s acts, that followed Arthur’s publication of A, disqualify Arthur from getting his patent on A. Why can’t Arthur attach to his app some proof, that he published A before Bob filed his app. Does that not do the trick?
3. What is so wrong about Bob saying he’s the sole inventor of A+x? He is, isn’t he?
4. What’s all this about Arthur suppressing A+x? If he didn’t publish A+x, and didn’t file on A+x, what legitimate complaint has he (or Robert) got, now that First to Invent has been consigned to the dustbin of history, and what counts is publishing an enabling disclosure of your invention, or filing at the PTO an enabling disclosure of your invention?
Trust me. 102(f) will be restored.
Sent from iPhone
So?
Who is going to check?
And when?
Answer: Never!
Inventorship is not a condition for patentability! Get it?
It is not an issue in the PTO. It is not an issue in court.
Inventorship is like best mode. A requirement, but not a condition. There is a big, big difference.
Sent from iPhonee
You have not been paying attention Paul. All that is required is a colorable arguemnt that a corp “thinks” it has the correct inventor.
That is all.
Take a look, for example, at the numerous prior public statements about the peending patent reform legislation of the IPO, AIPLA, etc. It should not be a surprise to anyone that the AIA is not a true first to file system, which is the point here.
Correct inventor designation on applications is still required in new AIA 100, continued 101, and the continued requirement for inventor application declarations [oaths], etc.
who is lawrence higgins and why should i care about what he thinks about patent law?
Ned: The named inventor does not have to have invented anything. He can be a pirate, a derivor, a thief, or any of that ilk. Yet is patent is valid.
Can we please stop it with the hysterical bxllshxt? The AIA includes rules specifically designed to allow inventors to challenge derived “inventions”. You don’t know that the patent is “not valid” until the AIA is applied in court.
It’s a bit odd listening to yapping puppies going apeshxt because someone might get a patent that they don’t deserve under this new law? OH THE HORROR!!!!! Meanwhile, the same patent luvin’ superheroes silently finger their silky capes while Intellectual Ventrolls asserts their 100% pure horseshxt that was granted under the current regime (essentially the same gxrbxge that the USPTO hands out to computer-implementing scam artists by the bucketful every week).
Ned Now that phenomena is going to be repeated big time by patent squatters.
We already have those people. They are called patent trolls.
Robert:
1. Arthur publishes invention A without filing for a patent.
2. Subsequently, Bob publishes and files for invention A+x, an incremental improvement over invention A. Although he got the idea for A+x from Arthur’s publication of invention A, Bob’s publication and application are written so as not to betray any obvious derivation, and Bob does not credit Arthur with the invention of A
Again, people like Bob are called patent trolls. They aren’t going away unless they are targeted directly for removal. What’s shocking is that the sockpuppets who otherwise jump to the defense of patent trolls and Every Crxp Patent Ever Granted care about this activity. What’s the big deal? More patents for everyone is the best thing ever, isn’t it?
yes its not a pure first-to-file system. however the new law is much closer to the first-to-file than the old law.
they are leaving it to the law of evidence to determine who the invention should be awarded to if two inventors have tried to claim ownership to the same invention but neither one has actually filed a patent within the one year deadline. very clever indeed!
just file the goddam application if u want to save money & time on ownership disputes.
The case of similtanious conception needs to be considered fraud because the odds are astronomical of a genuine occurance. Only then can we have integrity in the system and proper incentive to create
I was not consulted on this legislation by comittee or sponsors so its very backwards as expected.
The only way to begin the correct chain of inventorship is with correctly awarding conception based on a simple credible disclosure return initial disclosure document program. steping to a videocam at federal buildings and recording at uspto is another credible method with internet disclosure. Patenting around and corrupt file insertions are problems that must be identified and secret files eliminated and improved and immediate global infringement enforcement enacted
“big bugs?” Obviously, I have to discuss this issue with Dragon.
In litigation, no doubt, as the patent owner will have to prove his prior publication. One might also force the patent owner to do so by requesting a reexamination over the prior art. But opinion writers may not have be able to give a reliable opinion on art less than a year old because they cannot know what the patent owner has or has not published in any reliable manner.
anon, if it reads the same but for the "in this country" limitations, why should we expect that Congress intended any substantive changes when rewriting former 102(b) as 102(a). I would think the presumption of no change would be the operative presumption, especially without any definitional changes to the listed items.
Compare:
102(b) "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,…"
102(a)(1) "the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the
effective filing date of the
claimed invention
Note the changes are related almost exclusively to deletion of any "in this country" requirements, and the move from "one year prior to the filing date in the US" to "before the effective filing date of the claimed invention."
We also have the addition of the catch all phrase. But that by itself should not be construed to overturn 200 years of substantive patent law development unless the text of the statute cannot be construed in any other way.
In all due respect, indeed.
So Paul, would you then agree that it was never intended, and the AIA was quite consistently correctly never described as a “first to disclose” system by its proponents and major supportors?
With the possible exception of the Kyl non-quorum speech? I think it has been established that that little fallacy has been put out to pasture.
Well Paul, I will have to strongly disagree with you on the usage of the word “correctly.”
102(f) has been repealed.
The named inventor does not have to have invented anything. He can be a pirate, a derivor, a thief, or any of that ilk. Yet is patent is valid.
We have now a first to file system, inventor be dam…..ed.
True Ned, but discoving a prior public disclosure and its date, by either a search or litigation discovery, is going to be a heck of lot easier than pinning down a complexly-determined nebulous “invention date” under 102(g) and its case law.
Ned,
With all due respect, your suggestion that Congress intended no substantive change in law with the entire reformatting of 102 is not supportable by any stretch of the imagination.
Your personally deciding which aspects to pick and choose as not changed (and which have changed) is a clear indication that no such unannounced and highly selective reasoning can be supported. The fact that some aspects were personal bars and some were not and yet all are treated equally now cannot be ignored. And without an unsubstantiated and selective treament, you are faced with applications of the exception (to the patent defeating bar) that will fail to meet what you have professed that exception to mean – one way or another.
Bob, I think the new best practice will be to file a provisional application and publish it on the same day.
Regarding someone’s else’s public disclosure, I am afraid were are going to have a new phenomena in patent law — squatters. This is a well known phenomena in trademark law where a squatter files for your trademark in the USPTO, or in his own country. Typically, one has to pay big bugs to remove the squatter.
Now that phenomena is going to be repeated big time by patent squatters. The are going to file provisional on your public disclosure, particularly by describing obvious variations, and are going to demand that you pay big bugs for an assignment and a “correction of inventor named.” Now, if you tell me this is not going to happen, I ask you why it is not going to happen.
Re: “•With the passage of the America Invents Act (AIA), the US was going to become a First-to-File, instead of a First-to-Invent patent jurisdiction.”
No, that was never intended, and the AIA was quite consistently correctly described as a “first INVENTOR to file” system by its proponents and major supporters.
Robert,
This has been the subject of an ongoing debate on this topic (and I note one that has been recently re-picked up at The IpWatchdog).
It is rather surprising that the topic of the post does not acknowledge what is undoubtedly the most contentious issue – a bit sloppy Lawrence.
A major complaint by the infringer bar that one could not reliably know the invention date of a patent so that art, less than a year old, may or may not be good prior art, is NOT remedied by the new statute, as noted to some extent by Lawrence. It STILL may not be good prior art if the applicant publicly disclosed that subject matter before the date of the art. But, whether they did or did not publicly disclose is not so easy to identify, especially if the applicant wants to do it in a devious or obscure way.
Lawrence, regarding 102(b)(1), I read it to protect the inventor against any act of 102(a) that may be prior art against his own application regardless of whether it is public or not. I say this because I do not automatically assume that “on sale” is now a bar only if it amounts to a public use. I believe the courts will continue to construe “on sale” just as it is now construed, meaning that private, trade secret exploitation is a personal bar, but only after a year, and not prior art to third parties.
102(a) reads exactly like the current 102(b), but with “in the country” and “in the United States” removed. This does not suggest that Congress intended any change in substantive law regarding 102(b)->102(a) transition. It, in fact, indicates that Congress intended NO change.
There is no incentive to publish before filing under the AIA system. Consider the following scenario:
1. Arthur publishes invention A without filing for a patent.
2. Subsequently, Bob publishes and files for invention A+x, an incremental improvement over invention A. Although he got the idea for A+x from Arthur’s publication of invention A, Bob’s publication and application are written so as not to betray any obvious derivation, and Bob does not credit Arthur with the invention of A, but instead represents that he has been working on invention A+x for some time and that this is a case of simultaneous independent invention.
3. Arthur subsequently files for a patent on invention A.
Under our present first-to-invent system, when the examiner assigned to Arthur’s application rejects it on the basis of Bob’s application, Arthur may swear behind it with a Rule 131 affidavit it using his own publication as evidence of earlier conception.
With the AIA, however, Rule 131 is out the window, and in order to overcome the rejection, Arthur will be forced to prove that Bob derived the invention of A from Arthur–but on the basis of what? On the basis of information that is only in Bob’s possession!
It seems to me that the new best practice under the AIA is (1), never publish, and (2), if you come across the publication of an invention that seems promising, you should immediately publish and claim an improvement on this invention.
I think we can describe our patent-application seniority rule as
1. the first-inventor-to-cause-disclosure; otherwise
2. the first-to-file
I agree that it is not purely first-to-file. What controversies do you foresee? This seems like a pretty straightforward inquiry to me (beyond a government official determining which, if any, inventor caused a pre-filing disclosure).
Could the departure of Judge Ward potentially lead to a decrease in the amount of cases filed in the Eastern District of Texas?
I would predict the opposite now that Johnny, Sr. can control the number of filings directly.
Comments are closed.