Exactly. Why then waste time on this issue when there are so many other issues that affect so many inventors?

There was no intent to be condescending.

What I meant was I’m sorry that I did a poor job writing something understandable, not that you were lacking the capacity to understand. Be that as it may, we’ve been talking past each other, and it was time to agree to disagree.

I am by no means a Constitutional scholar. I had a law firm pull up all of the scholarly works on the subject in the last 10 years, and not a single one concludes FTF is Constitutional. They are the source of my position on the subject. The papers are listed below my name.

The Karen Simon paper is cited in the last two CRS Reports supporting the paragraph that says FTF is Constitutional. Here’s her conclusion: “…the first-to-file standard as proposed in H.R. 2795 is unconstitutional”. Well, regardless of whether you agree with her, clearly the citation is in error. I’ve been trying to get them to correct the error for years.

Anyway, sorry for the misunderstanding. Good luck with your blog.

Steve Perlman

1. Rebecca C.E. McFadyen, The “First-To-File” Patent System: Why Adoption Is NOT An Option!, 14 Rich. J.L. & Tech. 3 (2007)

2. John J. Okuley, Resolution of Inventorship Disputes: Avoiding Litigation Through Early Evaluation, 18 Ohio St. J. on Disp. Resol. 915 (2003)

3. Max Stul Oppenheimer, Harmonization Through Condemnation: Is New London The Key To World Patent Harmony? 40 Vand. J. Transnat’l L. 445 (2007)

4. Paul M. Schoenhard, Reconceptualizing Inventive Conception: Strengthening, Not Abandoning the First-To-Invent System, 17 Fed. Cir. B.J. 567 (2008–2009)

5. Adam Sedia, Legislative Update: Storming The Last Bastion: The Patent Reform Act Of 2007 And Its Assault On The Superior First-To-Invent Rule, 18 DePaul J. Art Tech. & Intell. Prop. L. 79 (2007-2008)

6. Karen E. Simon, Comment, The Patent Reform Act’s First-to-File Standard: Needed Reform or Constitutional Blunder?, 6 J. Marshall Rev. Intell. Prop. L. 129 (2006)

7. Edwin Suominen, Re-Discovering Article 1, Section 8 — The Formula for First-to-Invent, 83 J. Pat. Off. Soc’y 641 (2001)

8. Susanna Chenette, Note, Maintaining the Constitutionality of the Patent System, 35 Hastings Const. L.Q. 221 (2008)

9. Timothy R. Holbrook, The Treaty Power and the Patent Clause: Are There Limits on the United States’ Ability to Harmonize?, 22 Cardozo Arts & Ent. L.J. 1 (2004)

I don’t appreciate your arrogance. “I did give you specific examples. I’m sorry you were unable to understand them.” Really, how arrogant and condescending. This is particularly peculiar given that you did NOT provide any evidence, just baseless conclusions that were unsupported.

The fact that you are careless with your inventions and secure yourself with NDAs and no patent applications prior to showing your invention is not my problem and not a patent system problem. It seems you are unrealistically phobic of provisional patent applications, why I have no idea. If you have an NDA, evidence to demonstrate breach and you do nothing that is very unfortunate. It is also a very typical story told so frequently and listeners tend to not buy.

If you don’t have $1000 or $1,500 to prepare and file a meaningful provisional patent application then there is nothing anyone can do to help you. Without even those modest resources you are pursuing the wrong career path. Innovation and inventing takes resources, and engaging in the behavior you have described seems to get you now where, but you say you have done this multiple times? It just doesn’t compute.

You really come across as a bitter inventor who is looking for others to blame, and just a tad bit radical when you start talking about the Constitution. Have you read the Constitution? I know I shouldn’t ask, but I am really curious to know where you think first to invent is memorialized there? Simply stated, it is no anywhere in the Constitution, and first to file will not require a Constitutional Amendment.

-Gene

I did read the article you posted, and respectfully, your analysis is based on assumptions that are inconsistent with my experience actually being one of the small entities you refer to, being a top executive at large entities, and working extensively with foreign companies small and large.

I did give you specific examples. I’m sorry you were unable to understand them.

Here’s a couple more:

(1) we have not had interference hearings, but we certainly have had prior art cited in OAs which we overcame by presenting evidence that our invention had been conceived first.

(2) I have made presentations seeking funding to large tech companies under NDA, only to find the company has filed a patent claiming the same idea shortly after my presentation, even with the very same diagram I used in my presentation. Sadly, this has happened on several occasions. But, under FTI their patent is trivially overcome by showing prior records of the invention (in fact, the NDA and presentation itself would probably be sufficient). Under FTF, I suppose I could sue the company for violating the NDA and for fraud. Much more expensive and time-consuming.

Of course, we try to get patents filed before disclosures to companies, even under NDA, but we’re startups: We have extremely limited resources, especially early days. FTI allows us to operate far more efficiently.

I could go on and on, but Gene, respectfully, I think I’ve had my say, and we’ll have to agree to disagree.

Perhaps we can find common ground in putting Patent Reform on hold until inventors have had their voices heard and have Congressional reports accurately reflect the no Constitutional scholar has published a paper in the last 10 years that concludes that FTF is Constitutional, and FTI has been upheld for over 200 years. As I understand it, Congress and the Administration are obliged to uphold the Constitution. So, FTF would require an Amendment. It might be hard to get a 2/3 vote on such an esoteric issue.

Good luck with your blog.

Thank you.

Steve Perlman

Trust me, it was not sweet talking from Kappos. True, something he said clicked a switch, but it was not his presentation per se. I think he raises a good factual argument regarding 7 out of nearly 500,000 (or whatever the number of applications is for that year).

There are so many out there that tell inventors not to patent at all, you can make money on your ideas, hold of on patenting, etc. Now some of that is justified because it makes no sense to spend money before you know whether there is a market, and businesses decisions sometimes dictate unique courses based on unique circumstances, but the majority of those pushing idea protection, services, prototyping, etc. are merely saying “don’t get a patent because you should do what I can offer first.” So many independent inventors don’t know what to do, and listen to the wrong people.

My thinking… we practically have a first to invent system (that part was driven home by Kappos)… and inventor scams like Invent Help wait up to 3 years in some cases to file an application, others simply say don’t get a patent, which is horrible advice if you want to pursue a licensing strategy, or even a manufacturing strategy that will require investors and funding. Rather than allow the first to invent rule complicate the narrative and confuse inventors who do not really understand evidentiary standards, what if there were a simple rule. Invent and then file first. The charlatans of the inventor world won’t be able to manipulate and prey based on delaying a filing. Those selling snake oil will be obvious, a real benefit.

Add to this the possibility of early state work sharing in terms of patent searches and preliminary search reports among and between offices, which should speed up the patent process, and I think why not? Done appropriately we could cut into pendency, get to quicker issued patents, stop scams and more. Yes, 7 folks in 2007 would have lost instead of won, but how many will alter their course? Most, decreasing the negatives.

I am purely weighing pros and cons here, and I have changed my mind. With a thoughtful strategy of provisional filings practically any conception can be turned into a asset. Yes a weak asset or a potential asset, but a foundation is being built.

Sorry if I came across harsh. Some background. You seemed to me to suggest I was a lecturer, pundit and I hear “academic.” I couldn’t make it in the academic world because I was practical, taught skills, wrote about stuff that mattered and strategies to use patents in a capitalistic culture. All evil things in the liberal academic world. Maybe I am an oddball, not accepted in either in the academic world or in the real world, but I would like to think of myself as a patent attorney who is an entrepreneur and keeps his eye on the business goal…. for what it is worth.

Cheers to you as well.

-Gene

You must have missed it. Top of post #12 in this thread.

“It is apparent you do not work with these inventors and you have no idea about what records they keep.”

A substantial minority of my week is spent working directly with inventors. The people I file patents for, I share offices and lunches with. The idea that every inventor keeps an “inventor’s notebook” documenting and detailing every conceived invention, dated and witnessed, is not a reality, although there are certainly careful inventors who do that, and those who have had to navigate patent prosecution are well apprised of the benefits of such. But things like proposals, reports, presentations, e-mails, meeting minutes, these are things that are regularly generated in the course of a research business’s activities and these things are easily attested to in order to evidence solid dates before which conception must have taken place.

“I know more about patent law than you do”

I don’t doubt that you do, and I haven’t stated that you don’t. I would classify you as one of the nation’s valued experts in certain respects, which is exactly why it disturbs me that you’ve flip-flopped on this important issue apparently so capriciously. It leads me to wonder whether all of your other convictions are similarly so flimsily based–what else will you be changing your mind about? Now, open-mindedness and flexibility of opinion are critical attributes of any thinking person, and everyone is entitled to change his or her opinion. But, Gene, you’re a person of strong opinions, and your readers rely on them to be firmly founded. In this case, it didn’t seem to take a fleet of bulldozers to upend your foundation–just a few words sweetly spoken by Kappos. Is that really the case? Or were there other factors that led you to rethink your position?

Cheers,
RKS

You say: “Under FTF, there is no question that many of these inventions would never have come into being because we couldn’t have afforded the patents or funded them…”

This is argument and supposition. I do have questions, and you are not providing any evidence to support your claims. In fact, there is absolutely no evidence this is true, and it is a defeatist way of looking at things. It is really unbelievable to assert you can only succeed under first to invent when the facts demonstrate conclusively that we already overwhelmingly have a first to invent system.

How many times have you and your company only been able to obtain a patent as a result of winning an interference proceeding as the junior party? Exactly how many of your inventions are patented because you were able to demonstrate you invented first and filed second?

You say: “It is likely that you are reading this post now on a device which is practicing one of my patents that only exists because of FTI.”

Exactly why is that true? Stating it is no substitute for evidence.

You say: “we did just fine protecting our foreign interests.”

So you are able to operate globally under a regime that is first to file and requires absolute novelty without any grace period, yet you could never survive in the US if the US changes to first to file. How does this make any sense? How is it that you are able to survive a foreign first to file and could never manage a US first to file. There is a disconnect.

You should read the article I just posted. It is simply not accurate to say that you cannot afford to protect innovations in a first to file system. If you are relying on invention notebooks and invention records to prove first to invent you are relying on things far less detailed and far more cryptic than an appropriate and cost effective provisional patent application.

US innovation will continue to move forward, and with US inventors having incentive to file earlier I think forward thinking folks with a strategy in place will come out just fine. In fact, I know that to be the case.

-Gene