This is only the tip of the iceberg, and only from a patent practitioner’s point of view. See my account of a more complete view on a companion thread at
http://www.ipwatchdog.com/2009/11/08/making-the-case-against-first-to-file/id=7197/

I bet that does not get done on the very day the inventor first discloses to you by bringing in his prototype.

Consider this commong hypothetical: under first to file if you get the disclosure, go through your process described above to draft your provisional, which you then file. Between those events, someone else files on the same subject matter. Your client loses and you get sued for losing his rights. In a first to invent world, you get to point to the prototype to save your client and yourself.

The value of first to invent is to allow time between invention and application filing for a decent application drafting, and perhaps even for the client to see how the market is before going to the effort at all (bless the USA for the one year grace period; too bad the rest of the world won’t harmonize to adopt it).

Only 1 paper of the 9 we found was written by a law student. Ironically, it was the one erroneously cited by the CRS Reports.

Like you, the law firm that did the research for me was concerned that law student papers would be less credible, and checked to see which were from law students (and found only one).

Just to be clear, are you saying that law students recommend what law professors publish? (Sincere question: I don’t know what the protocol is at law schools.)

I don’t know anything about Constitutional Law, but what I have found in these papers is they have gone to the Federalist papers and other contemporaneous works to establish what the intention of the clause was and, yes, what the meaning was of the word “inventor”. Apparently, there was also a pragmatic issue at hand for resolving priority of patents filed in different states under a Federal patent system, which was handily solved by first-to-invent.

It is striking, though, that there is a lack of published papers supporting FTF being Constitutional. One would think that Constitutional scholars have no stake in the matter and would at least come down evenly on both sides of the question. If I’m able to get the CRS Report corrected, it will be interesting to see what citation they use.

In any case, thank you for your response.

Setting this aside for the moment, you said you could show me how to file provisionals for $1,000-$1,500 that provide as much protection a patent. Given the complexity of a patent like US7,548,272 that I cited above, with 44 pages and 27 figures, including ones with computer-generated imagery, do you think we could still do a defensible provisional on such a budget? If so, I’m definitely missing something, and I’m interested in how to do it. (If not, then perhaps you could scope out the kind of patent that could be protected by a provisional on a budget.)

What has been hard about this patent reform debate is that it has been focused on general concepts, rather than specific examples, which is why I’m asking the question about a specific patent. US7,548,272 took a lot of elements to make it work, but end result was a groundbreaking invention.

Thank you again.

Steve

In case “Just visiting” is still reading, given the above fact pattern, a case like that should be winnable on appeal. If the BPAI doesn’t give the examiner a beat-down, the CFAC would, because it’s clearly established that the inventor doesn’t have to drop everything.

Timecards are also pretty useful in establishing diligence, especially if the timecards show hours being allocated to different accounts, where the accounts represent different projects and one of the projects is attested to as being the claimed invention. Even where there may be a gap of a week or two, the timecard can show that the inventor maintained diligence even where he wasn’t working on the invention, because he was working on briefly something else that demanded his attention.

But sorry your examiner gave you a hassle. That’s what examiners sometimes do, and that’s why good practitioners fight back with the law and the facts.

RKS

I have commented on the Constitutional issue when I said earlier in the thread that there is nothing in the Constitution that requires first to invent. It is a completely bogus argument. It is not surprising though that a number of academics have written about it. Academics need to get published in order to advance and get tenure, and in law schools the ones making decisions on what to publish are law students, which is an irony all to itself. In any event, law students think Constitutional issues are the most important ones even though they almost never come up in life. They also think they understand the Constitution and are experts on it after a single 4 credit course.

Substantively, the intellectual property clause ( Article 1, Section 8, Clause 8 ) gives Congress the following power:

“To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries…”

As you can see, there is nothing there that requires first to invent as the standard. Add on to that the fact that the law will change to reward the “first inventor to file” and you can see it is a completely bogus argument.

I am sure you will try and counter by saying the use of the word “inventors” in the clause somehow means “first to invent,” but that too will be bogus. Under the first to invent standard many who are truly the first to invent are prevented patents simply because they waited to long to file an application. So the only “Hail Mary” pass here that would work is to argue that pretty much since Thomas Jefferson wrote the Patent Act the requirement that inventors not delay in filing is unconstitutional, which is absurd.

-Gene

[To the extent my comments seem arrogant or egotistical to either you, or to anyone else reading your blog, please accept my sincere apologies. I mean it. I'm much better at making things than I am writing about issues. I'm not taking this much time to comment for the purpose of offending anyone or a vehicle for self-promotion. It's because this is a very significant issue, and I do have highly relevant experience to share. Thanks.]

Patent leather:

We’re quite aware of our diligence obligations (I commented on that in Gene’s prior article). These were all inventions that met the standards for patentability. If we had the resources of a large company, we could have filed patents on all of the inventions (e.g. when I was at Apple and Microsoft, I had that option). But it is way too expensive to file patents for every invention in a startup. So, you have to triage amongst them.

Regarding provisionals, perhaps one reason I see them differently is because of the nature of patents we file. Consider US7,548,272 which is a motion capture patent, particularly suited for 3D facial capture. It is 44 pages with 27 figures. The invention involves electronics, illumination, radiation, imaging, lenses, material science, psychophysics, timing systems as well as complex software. This is far more than a one-hour disclosure with a smart patent attorney. And, if you think this patent is complex, bear in mind that there were a vast number of other inventions–some even more complex–that we determined we decided not to build products out of, and we never filed patents on them. For example, we developed an invention using time-of-flight of light waves for measuring facial shape–a completely different approach. We decided not to pursue a product with it and did not file a patent. Recently, we’ve seen other companies introduce products using that approach. It works, but we did not have the resources to pursue it.

A $1,500 provisional could not possibly be filed for this patent. Just generating the figures alone, many of which are grayscale images, cost us more than $1,500 in resources before we could even give them to the patent attorney. There was no substitute diagram we would use to describe the figures that would be less expensive. Indeed, I’ve seen the USPTO reject grayscale images in the past and require line drawing equivalents. In this case, they acknowledged the complex grayscale images in this patent were necessary to describe the invention.

US7,548,272 is probably an average-sized patent for my startups. We have patents that are over 75 pages long with over 50 figures. We do have others that are smaller, but generally speaking, if an idea is really simple, it’s unlikely to be competitive in today’s market against the complexity of products being developed by major corporations.

Under FTI, it makes it possible for a startup to get patents (and thereby get funding) to develop complex products that stand toe-to-toe with major corporations. We are able to operate very efficiently, and not make filings for complex inventions that will never see the light of day as products. Provisionals definitely have their uses, but a provisional for US7,548,272 is definitely not a one-hour disclosure for a $1,500 filing.

Also, Gene, you have not commented on the Constitutionality question. You asked for my basis for FTF being unconstitutional, and I gave you a list of all the papers the law firm I hired could find published on the question in the last 10 years, and none conclude FTF is Constitutional. The 2 CRS Reports on patent reform state that FTF is Constitutional and cite a paper that specifically concludes FTF is NOT constitutional. No matter whether you agree or not with the paper, clearly the citation is in error. And, I’d be interested in what current references you have to support the Constitutionality of FTF.

Steve Perlman

Just to pick up on your comment a bit… this is exactly why first to file will help. Inventors, engineers, scientists and even sophisticated businessmen simply do not know the law, they do not understand the legal requirements and worse yet they think they know everything. So they make horribly bad decisions based on inaccurate understanding of what the law requires. Certainty of first to file, among many other reasons, will make it far superior for the inventive community. In short, it will save them from themselves.

-Gene

Please see my earlier post. You could not honestly rely on FTI in your circumstances because delaying filing to “determine which inventions are needed” is not being diligent. As all attorneys that are reading this board should know, the diligence standard is extremely difficult to satisfy. You could use FTI to establish priority based on an actual reduction to practice (without regard to diligence), but I am assuming if you aren’t sure whether to file an application on an invention yet, you likely don’t have an actual reduction to practice yet. If you could pull off a cheap actual reduction to practice upon conception, that would solve the problem (eliminate the diligence requirement), but I can’t imagine that would be cheaper/easier then a filing a quick provisional.

If you did file any of those applications that you waited to file because you were evaluating the marketability of it, and then you get yourself into an interference situation (or litigation based on FTI), you will most likely lose due to the extreme difficulty in satisfying the diligence standard. So I don’t see how FTI helps you in your circumstances.

What an ego you have. Colorful remarks as the result of a misinterpretation? You are a funny guy. Everyone can see for themselves the arrogance of your comments.

Yes, you can file provisionals for $1,000 to $1,500 right now with excellent attorneys doing all the work. If you want to spend substantially less then I can show you how and you won’t lose any quality. You can choose to believe it or not.

If your top engineer’s time is too valuable to spend a single hour working on a disclosure then you will get exactly what you deserve, which is nothing.

You say: “The fact there are only 7 interference hearings/year (despite the fact that FTI is used to establish priority in patent examinations) and the US by far leads the world in startups is evidence the FTI works, not that FTF is equivalent.”

No, really, it is evidence that there is virtually no difference between first to file and first to invent.

Your background is indeed very impressive, which makes it all the more curious why you make sure awful business decisions and fail to see business opportunity but rather choose to cling to a model that doesn’t work. It is also curious how someone who is as successful as you claim to be wouldn’t be able to navigate a first to file world. You have already admitted that you won’t be able to innovate or keep up in a first to file world. Your employees and investors must love knowing that your business will collapse and you have no plans for what is really inevitable sooner or later.

-Gene

http://www.ipwatchdog.com/2009/11/06/kappos-talks-patent-reform-at-uspto-inventors-conference/id=7172/

(You also will be entertained by some colorful remarks by Gene, due to a misinterpretation of a self-deprecating sentence as being directed toward him.

One thing I will add: You’ll find in my comments that FTI allows my companies to file less than 1/10th the number of patents we would under FTF, because FTI gives us enough time to flesh out products, determine which inventions are needed, and just file those as patents. Given that we spend $15-$30K on a patent, this is a big savings, and it is a cost deferred typically after we close principal financing.

Gene is advocating filing less expensive provisionals on every invention at conception under FTF, which he described in his comments to the prior article as costing $1,000-$1,500 each, as an alternative to filing 10 provisionals per eventual filed patent, or spending over $10-$15K upfront, to later file one $15K-$30K patent based on one of the provisionals. And, that’s just legal fees. My top engineers–the ones doing the patentable pioneering work–would have set aside time to make the provisional disclosures, of which >90% of the time would be wasted, and it would be tying them up as the earliest stages of the project, when they are most needed. And, of course, we simply would not have the $10-$15K to spend on a sea of provisionals in the early stages of a startup anyway.

The fact there are only 7 interference hearings/year (despite the fact that FTI is used to establish priority in patent examinations) and the US by far leads the world in startups is evidence the FTI works, not that FTF is equivalent.

There is far more information in my prior comments in the prior article, including the support for a point that everyone has glossed over (including Congress): that in the last 10 years, not a single paper by a Constitutional scholar has concluded that FTF is Constitutional. Indeed, the last 2 CRS Reports state unequivocally that FTF is Constitutional, and both cite a paper the unequivocally concludes it is NOT, and I’ve been unable to get that error corrected. So, this entire debate may be moot.

Here’s my background:

I hold 91 patents, and have about 100 pending. I’ve run 8 startups, I’ve been a Division President of Microsoft and a Principal Scientist of Apple. I’ve developed QuickTime, WebTV, Mova Contour, OnLive, and lots of smaller inventions, like the initial Windows Mobile chipset, modems, wireless systems, lens system, and alternate energy systems. I’m a pure Practicing Entity: every patent I’ve filed is for a product I’m developing. I’ve never licensed my patents, and never had to sue anyone for infringement. That said, were it not for the strength and depth of my patents, I never would have been able to get funding or secure partnerships for my ventures.

Steve Perlman
President & CEO
Rearden, OnLive & Mova

One’s viewpoint in life is generally dictated by their own personal experiences, and I have had some nightmare experiences with our “first to invent” system. For example, one client files and then discloses his invention to party X who then immediately files on it and tries to capitalize on it. Most license agreements require a warranty of non-infringement, so this ties up the technology for years while the interference situation was resolved (we ultimately prevailed). As another example, some validity studies I have worked on are inconclusive because it is unclear as to the ability of the patent owner to swear behind some relevant references. And now I generally advise clients to wait at least a few months (preferably 6+) after filing before disclosing their invention, to help avoid the scenario above. It would be nice if an inventor could file his patent application and then disclose it the next day without worry.

While David mentions taking time away from key people, if the inventor(s) are taking their time to decide what makes sense to file, they certainly could not be considered diligent. Therefore, they could not “swear behind” based on diligence and could only do so based on an actual reduction. And if they are waiting on more information before deciding whether to file, it is probably unlikely that they have invested the time and money to have an actual reduction to practice. While the USPTO will usually accept a 1.131 affidavit without too much inquiry, I have never and would never file one based on diligence because that would probably be fatal for the patent.

I realize different people have their different experiences and circumstances, but I personally would be very happy with the “new 102.”

You say: “you’re avoiding dealing with the huge economic costs”

No, I don’t avoid dealing with them. I am just trying to keep grounded in facts. In at least 99.99% of applications the first to file is the first to invent. You can argue until you are blue in the face and you cannot change that reality.

You say: “You’ve made the same logical mistake as the PTO – considering only the parts of the process in which you are an active participant, and assigning zero cost to everything else.”

That is simply not true and you should know that. I am a business person first, patent attorney second. Patents are a means to an end, not the end themselves.

What you are ignoring is the benefit and acting like there will be none. If you have clients interested in cutting their procurement costs and protecting everything that could be patented then let me know and I will explain how to do that. But telling me I don’t have my eye on the ball is not helpful, and wrong. Who would not want to protect everything, not forcing decisions and mistakes to be made and doing it while saving money? It can be done, and if you would just stop for a minute and see the bigger business potential you would understand this is a huge opportunity, particularly for you and the folks you represent. Anyone with funding or a desire to obtain funding should not fear first to file. The strategies do not require first to file, and can be applied presently. But if first to file does happen those without appropriate strategies will fail, lamenting the past and pursuing defeating courses of action.

The fact is the present system doesn’t work, the status quo is not an option, and it does no one any good to pretend that the couple situations a year where first to invent changed who won the patent will cause the economy to stop working.

-Gene

Why do you continue to ignore the facts and truth about the law? You have no evidence other than “trust me, I do these deals.” Then you incorrectly say I am relying on anecdotes. No, I am relying on truth and facts. The fact that you don’t like reality doesn’t mean it is not real.

Anyone claiming the economy will collapse as a result of first to file cannot be taken seriously. In at least 99.99% of all patent applications the first to file was the first to invent. The law doesn’t care whether you are actually the first to invent, the law cares whether you have the proof coupled with diligence, and that is why the overwhelming majority of second filers fail in an Interference. They cannot meet the legal standard and are basing business decisions on emotion and an inaccurate understanding of the law.

-Gene

You say: “I have not been able to file, the process cost would cripple me. ”

Inventing can be a costly business, but that is the way it is now under first to invent. No different under first to file. I see you also say later in the chain that your inventions are still unknown. That is all well and good, but please explain to me how your situation would change under first to file? The reality is your circumstances would be exactly the same and you would be completely unaffected. Thus, I see no rational reason for you to act as if first to file would be disaster. It wouldn’t change your situation at all. You will wouldn’t have money to pursue your invention. That is 100% obvious given that under first to invent, which is currently the standard, you still have not filed.

On top of that, if you cannot afford the $110 filing fee for a provisional patent application then you should not be an inventor. I have a system that allows people to create extremely detailed provisional patent applications and very few use it because they are cheap. For $110 filing fee $99 to use my system and maybe $200 in drawings you could have an enormously detailed provisional patent application on file, the first steps toward acquiring an asset and something to show potential investors who might be interested in funding you to move forward. Instead you do nothing and complain somehow that first to file will cripple you. NEWSFLASH: You are not doing well under first to invent! Perhaps it is not a law problem, but something you are not doing properly. Have you ever thought of that?

You say: “Obviously, you are now pro big business.”

I would appreciate you keeping things real and honest and not spreading falsehoods. Everyone who is intellectually honest knows that is not the case. Why do you find it necessary to ignore what I say and put words in my mouth? Who made you King?

You say: “The real inventors get ignored in a first to file system…”

Simply not true. False. Wrong.

You say: “I think your change of attitude is total BS!”

And I think you are bitter and your position is factually incorrect and you are intellectually dishonest. You have no money to pursue your inventions and you are mad. The fact is you have no money under first to invent, and you have no money under first to file. Your situation hasn’t changed. In fact, today under first to invent those inventions on the shelf are of absolutely no value to you. You have not been diligent and you could NEVER prove you are the first to invent and entitled to a patent anyway. You see, that is the trouble. You are assuming you know the law and that since you invented first you would prevail. The law says that you have exhibited no diligence so if someone files on those inventions before you they would receive the patent, not you.

-Gene

Priority dates sometimes do not matter in you can think outside the box. I have patentable technology/claims that date back to 1987, 1990, 1992. I have not disclosed anything and still have:

A biodisquised implant or dip stick technology
A tissue regeneration device and process
An infection control technology
A autologous implant technology

To date, no one has patented them and no one has figured out how I did it and published, which leaves me the ability to reinvent “my wheel” when I can afford it. There are concepts that have been ignored by the engineers and MD’s that dominate these areas.

Unfortunately, no matter your circumstances, you cannot wait to file. Under current law, you can only reach back 1 year (which IMHO is nearly impossible anyway). Also, if you publicly disclose your invention, the clock is aleady ticking.

Although I think it normally would be a bad idea, I would recommend any inventor who cannot pay for an attorney to buy the book “Patent it yourself” and file your own provisional. It might not get you much, but if you wait too long, you are going to be out of luck anyway. Either someone will beat you to the punch by more than 1 year or you’ll slip up somehow and unknowingly dedicate your invention to the public. I cannot tell you how many times I have sat in a conference room and told an inventor “nice idea, but if you came to me 6 months ago, we could have helped you. However, since you disclosed your invention to the public 18 months ago, you cannot obtain a patent on it.”

I have had a couple months between critical date and date of filing and I had a dozen or so different explanations (along the timeline) as to what happened and when. However, the declaration was still treated as defective since, e.g., I didn’t describe what happened between July 3 and July 13th and between July 13th and July 17th.

As an under funded inventor, I totally disagree with your point of view. I have not been able to file, as the process cost would cripple me. In these days of recession, some of us are not employed and struggle to meet our daily expenses for room and board. Your line “On top of that, it is inarguably good, correct, legally sound and business appropriate advice to file sooner rather than later” is disingenous at best, if you claim to want to represent small business and individual inventors. Obviously, you are now pro big business. The real inventors get ignored in a first to file system, as patent attorneys and prosecution is prohibitive for all but the well off. What would have happened to Goodyear in this system? Languishing in jail until he died. I think your change of attitude is total BS!