Dennis,
Apparently, you have *not* read our letter or looked at the clear and convincing evidence in Slide 9 of my FTC testimony linked in the letter. It shows that under FTF pressures, the relative amount of “clutter” applications that do not deserve examination is nearly FIVE TIMES that found under filing conditions that have no FTF pressures. Although much of the excess “clutter” applications filed under FTF pressures at the EPO may ultimately not get examined, FTF “clutter” applications would be examined at the USPTO because the USPTO has no mechanisms for disposing of applications prior to examination. In contrast to international pre-examination procedures, US applicants pay all examination and excess claims fees upfront; USPTO does not issue a pre-examination search report; USPTO does not issue preliminary patentability reports on US applications; USPTO has no process for deferred examination – a process that eliminates having to examine every filed application. In this environment, US applicants have no incentive to abandon the “clutter”. If anything, some applicants would still try to get *some* claims allowed from the “clutter”. These patents would be the ultimate fodder for trolls…

Read this and other analysis in the updated and expanded version of our letter at
http://works.bepress.com/cgi/viewcontent.cgi?article=1057&context=rkatznelson
We continue to accept more signatories this week. If your company agrees with our position, please email its legal name and city to ron@bileveltech.com in order to be added to our list.

Ron Katznelson

Dennis,
Apparently, you have *not* read our letter or looked at the clear and convincing evidence in Slide 9 of my FTC testimony linked in the letter. It shows that under FTF pressures, the relative amount of “clutter” applications that do not deserve examination is nearly FIVE TIMES that found under filing conditions that have no FTF pressures. Although much of the excess “clutter” applications filed under FTF pressures at the EPO may ultimately not get examined, FTF “clutter” applications would be examined at the USPTO because the USPTO has no mechanisms for disposing of applications prior to examination. In contrast to international pre-examination procedures, US applicants pay all examination and excess claims fees upfront; USPTO does not issue a pre-examination search report; USPTO does not issue preliminary patentability reports on US applications; USPTO has no process for deferred examination – a process that eliminates having to examine every filed application. In this environment, US applicants have no incentive to abandon the “clutter”. If anything, some applicants would still try to get *some* claims allowed from the “clutter”. These patents would be the ultimate fodder for trolls…

Read this and other analysis in the updated and expanded version of our letter at
http://works.bepress.com/cgi/viewcontent.cgi?article=1057&context=rkatznelson
We continue to accept more signatories this week. If your company agrees with our position, please email its legal name and city to ron@bileveltech.com in order to be added to our list.

Ron Katznelson

So you think Sarah Palin is an embarrassment? That seems particularly gratuitous.

As for applications not being out of control around the world in countries that use first to file, of course you are right. Whether you like it or not, inventors and corporations want US patents. To compare the experience of the rest of the world with the US is naive at best. We have no idea what this will mean to the US patent system because everyone already wants to use the US patent system and get US rights because the US is the overwhelming market. Sorry, but you suggesting that we can learn from the rest of the world is simply wrong. The fact is that US patents are valuable and patents in most other countries are not.

-Gene

Best wishes,
Stan E. Delo

Because we have more to lose than they do by not.

I agree that examiners should have been reviewing the specification all along, but the reality is that they don’t. It is wonderful to think that they should, and want them to, but if we make more work for them the reality is that the backlog will grow and the Patent Office will become completely irrelevant. Having the highest quality patents without any patents issuing in a technologically relevant time frame is not helpful. At some point someone, an examiner or the Board, is going to have to decide on who to give the patent to when there are competing applications and one doesn’t have a sufficient disclosure to make the claims. The reality is that this will happen all the time. My disclosure may satisfy 112 for a handful of claims, and not for others, so that would leave us with the same interference type analysis, only magnified by the increased number of applications.

I agree that the US should not give up bargaining chips. We should not be so desperate to enter into treaties that require us to adopt the bad ideas of other countries. By default the US establishes patent law rules and those in the State Department, Department of Commerce and White House need to realize that. For many administrations we have been trying to become more like others, regardless of the fact that there is no need to and they should become more like us. We have the dominant patent system, the dominant market and the most innovators, so why would we ever consider becoming like other countries?

-Gene

Maybe I’m misunderstanding you on this 112 point, but it sounds like you’re saying that moving to first-to-file would require Examiners to do something that they should have been doing all along — e.g., confirming that provisional applications provide adequate support for later-filed non-provisionsals. If that’s what you’re arguing then I would say that *even if* the move to first-to-file requires additional work (and I’m still not convinced for the reasons I gave above; determining the effective date of prior art references is a time-consuming and uncertain process for many Examiners), then we should embrace the move because it would improve the average quality of patents — an improvement that, by definition, makes patents more valuable to exactly those people who comply with the rules. Are those people more likely to be large corporations than small entities? For a host of reasons, including the relative importance of IP rights in negotiating with other companies, I don’t think so.

Also, Katnelson’s point 5 doesn’t really address the harmonization issue. The point is that a considerable amount of time is wasted dealing with the U.S.’s idiosyncratic rule of priority. If U.S. Examiners have a hard time figuring out the effective prior art date under 102, what hope to foreign examiners have? I don’t see this point addressed, and it is a major source of disputes during prosecution. Besides the added administrative costs for dealing with the lack of parity, the U.S. has consistently given up bargaining chips in IP treaty negotiations in order to preserve its rule of priority. That’s silly for all of the reasons that I’ve argued above.

For what it’s worth, I’ve spent a considerable amount of time researching the history of our rule of priority, and have an article on it forthcoming in the Franklin Pierce Law Review. You can find a draft of the article on SSRN here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1123572

I love the first-to-invent rule for what it says about our culture in the U.S., but it’s raison d’etre has expired and the rule should with it. Let it be more honored it in the breach.

I am not convinced that the filing of more applications would in and of itself create more work for the PTO. I think where the additional work will come is in weeding through who actually disclosed enough to have an application that satisfies 112. Right now the examiners largely only look at the claims, not the specification, but when you have a race to the Patent Office I think examiners are going to have to read the specification to see whether the earlier filed application was complete enough to be deserving of a filing date. If examiners do not do that then they will have to kick out the applications relating to the same invention like they do not for interferences. Then the question will be whether the earlier filed application satisfied 112, and if it did not then it would not be properly entitled to that filing date, making the second application filed really the first application to get a good filing date. So we would have many more disputes, rather than fewer disputes.

As it stands now we all know that the overwhelming majority of provisional applications are crap and do not support a filing date. With a race to the Patent Office I fear that many more applications will be crap and not support filing dates, which could really bog down the system.

I also think Katznelson’s 5th point above is particularly important. Everyone says that First to File works everywhere else, but can they really say that? The US is the dominant player and everyone adjusts their patent portfolio to our rules, so do we really know what a US FTF would cause? I don’t think so. This is sort of like saying that only the US has a best mode requirement and no other country has a best mode requirement. In fact, the truth is that the whole world has a best mode requirement because that is what the US requires and if you want a US patent you need to disclose it, thus there is a de facto best mode requirement.

I just worry that we don’t know what we are getting into here. This is obviously the first step toward a world-wide patent, or at least getting a patent in one country and then that leading to a registration in other countries based on the first issued patent.

-Gene

Could you explain why the filing of applications in smaller chunks more often would create more work for the PTO? Putting aside interferences (which you appear to conced do not favor small entities), this seems to be the main source of disagreement. I don’t see that it follows at all that smaller applications more often would be more burdensome on the PTO than fat applications once/year — especially since figuring out what is prior art and what isn’t reduces in many instances in a first-to-file world to looking at a date. And that’s putting aside the savings of time in coordinating search activities with foreign patent offices — a problem that I don’t see addressed in this analysis at all.

Thanks for your any reply.

My fear is that there was so much debate over damages that the big ticket items that could cause more work for the PTO and further damages the process were hardly considered. Post-grant review is a nightmare! I know interferences are expensive, and there needs to be a better way, but this running through first to file without discussing what that will do to the number of applications and workload at the PTO is sad.