Comments on: Drummond Joins American Innovators for Patent Reform http://www.ipwatchdog.com/2009/08/31/drummond-joins-american-innovators-for-patent-reform/id=5456/ Patents, Software Patents, Patent Applications & Patent Law Thu, 09 Feb 2012 07:58:49 +0000 hourly 1 By: Paul F. Morgan http://www.ipwatchdog.com/2009/08/31/drummond-joins-american-innovators-for-patent-reform/id=5456/#comment-8049 Paul F. Morgan Tue, 01 Sep 2009 22:10:17 +0000 http://www.ipwatchdog.com/?p=5456#comment-8049 It certainly amazes those of us who have had many years of client responsibilities for interference law and practice (and settlements) that “small inventors” still think that the U.S. "first to invent" system of 35 USC 102(g) and the current interference rules generally benefits “small inventors.” First, It has been shown for years that only a relatively small percentage ALL inventors who delay filing patent applications until after someone else with interfering claims will normally end up getting those claims in an issued patent by successfully proving a prior invention date. Especially if the second to file does not have an actual reduction to practice before the conception date [not just the filing date] of the first to file. More recently, a study published in the JPTOS showed that small inventors are actually disadvantaged by the interference system (something practitioners have always known). This is not just a problem for the inventors who cannot afford the several hundred thousand dollar or more costs of using a real interference expert. It is also because well-heeled parties who filed later can very often use the current interference system to obtain a decision of unpatentability on any grounds against any or all parties. Thus, even the small inventors who file first can be are vulnerable an interference litigation attack. [They would be protected from that under a first to file system.] A high percentage of interferences these days do not even get to the priority of invention issue, because of the frequency of prior adverse patentability decisions. To put it bluntly, a significant percentage of interferences in current years end up as successful invalidity attacks, never even deciding who was the "first to invent." The latter are significantly less than 100 a year. Other than the common misunderstandings above, the superficial attraction of the “first to invent” system is that it allows those applicants who are NOT claiming the same or interfering claims inventions to use Rule 131 declarations to "swear behind" [instead of distinguishing over] the filing date of earlier-filed patent applications or publications of others. [Such declarations are not even legal if any equivalent disclosure to the reference was published more than a year before the applicant's filing date, but that is rarely checked by PTO examiners.] Nor are the alleged facts of prior invention in a 131 declaration very often given much scrutiny, even by the rare examiner who really understands the 35 USC 102(g) requirements. Thus, patent claims obtained with 131 declarations rarely survive litigation, because they rarely meet the real, and tough, tests for actually proving their invention was prior the invention date of the reference. By using a 131 declaration they have fatally created a file history that fails to distinguish over the reference. There is, however, a genuine problem with the present first-inventor-to-file system proposal in the most current pending legislation. There is a real need for an accompanying 'prior user' personal pure defense for those who have expensively developed actual products but not yet launched them or filed patent applications on every detail thereof prior to the filing date of another party. It certainly amazes those of us who have had many years of client responsibilities for interference law and practice (and settlements) that “small inventors” still think that the U.S. “first to invent” system of 35 USC 102(g) and the current interference rules generally benefits “small inventors.”
First, It has been shown for years that only a relatively small percentage ALL inventors who delay filing patent applications until after someone else with interfering claims will normally end up getting those claims in an issued patent by successfully proving a prior invention date. Especially if the second to file does not have an actual reduction to practice before the conception date [not just the filing date] of the first to file. More recently, a study published in the JPTOS showed that small inventors are actually disadvantaged by the interference system (something practitioners have always known).
This is not just a problem for the inventors who cannot afford the several hundred thousand dollar or more costs of using a real interference expert. It is also because well-heeled parties who filed later can very often use the current interference system to obtain a decision of unpatentability on any grounds against any or all parties. Thus, even the small inventors who file first can be are vulnerable an interference litigation attack. [They would be protected from that under a first to file system.] A high percentage of interferences these days do not even get to the priority of invention issue, because of the frequency of prior adverse patentability decisions. To put it bluntly, a significant percentage of interferences in current years end up as successful invalidity attacks, never even deciding who was the “first to invent.” The latter are significantly less than 100 a year.

Other than the common misunderstandings above, the superficial attraction of the “first to invent” system is that it allows those applicants who are NOT claiming the same or interfering claims inventions to use Rule 131 declarations to “swear behind” [instead of distinguishing over] the filing date of earlier-filed patent applications or publications of others. [Such declarations are not even legal if any equivalent disclosure to the reference was published more than a year before the applicant's filing date, but that is rarely checked by PTO examiners.] Nor are the alleged facts of prior invention in a 131 declaration very often given much scrutiny, even by the rare examiner who really understands the 35 USC 102(g) requirements. Thus, patent claims obtained with 131 declarations rarely survive litigation, because they rarely meet the real, and tough, tests for actually proving their invention was prior the invention date of the reference. By using a 131 declaration they have fatally created a file history that fails to distinguish over the reference.

There is, however, a genuine problem with the present first-inventor-to-file system proposal in the most current pending legislation. There is a real need for an accompanying ‘prior user’ personal pure defense for those who have expensively developed actual products but not yet launched them or filed patent applications on every detail thereof prior to the filing date of another party.

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