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.