That is an excellent question. Unfortunately we would not know what “typical” startup timelines look like without having a survey of U.S. startups, perhaps comparing those to FTF-country-based startups who do not depend on U.S. patents (are there any?). Such a study is one among other studies that should have been undertaken to inform Congress and the Commerce Department about real facts and about potential effects of the transition to FTF before pushing for this legislation. Does it not make sense to demand that such factual record be establish prior to changing 200 years of American law?

What we do know from a 2008 survey of about 1,500 U.S. Startups is that they have spent an average of $38,000 to obtain their most recent patent, which is roughly twice the expenditures per patent of all other firms and perhaps three to four times the costs for large firms with in-house patent counsel. Startups often pay significantly more than incumbents to their prosecuting attorneys, because startups (i) tend to file for patents on inventions that are more important to the company’s core business model than large firms, (ii) usually use outside instead of in-house counsel for patent prosecution; and (iii) often have difficulty monitoring outside counsel to limit overall costs. See Graham et al, High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Patent Survey, 67 (June 30, 2009). Available at SSRN: http://ssrn.com/abstract=1429049 .

Combine this stark imbalance of costs between small startups and large firms with increased filing frequency requirements with lower patent yields under FTF, and you have a fine recipe of killing or harming startups. While we may not know exactly how patent filing patterns and costs will evolve under FTF, we do have some overall results of such a transition in Canada, when it moved from FTI to FTF in 1989. A recent McGill University study shows that small businesses were put at a disadvantage compared to large firms and that patent quality declined. See Lo & Sutthiphisal, Does it Matter Who Has the Right to Patent: First-to-Invent or First-to-File? Lessons from Canada, NBER Working Papers, No. W14926, 28, (April 2009). Available at SSRN: http://ssrn.com/abstract=1394833.

This is not rocket science and should come as no surprise. It is the consequence intended by incumbent large firms pushing for FTF in the U.S. The only surprise is how many Americans can fall for the “harmonization” mantra used to cover up their real agenda.

Bart, let me clarify first that the EPO second-filings I show in Figure 1 discussed above do not include Euro-PCT applications (which exhibit even a lower abandonment rate than that shown for EPO second filings). Second, I am not sure how your specific firm uses first-filings at the EPO, but I have looked at some of the abandoned EPO first-filed priority applications to which priority is claimed in subsequent filings. In virtually all the cases I have seen (and this was by no means a scientific survey), the subsequent application had a related but different (and often expanded and more detailed) specification. The question arises as to why one would abandon an EPO application only to file a second application with the same disclosure? I suggest to you that although, as you say, applicants have not abandoned their inventions, they later discovered aspects of their inventions that require new claims, which may not have been well-supported by their first-filed EPO specification. Would you be serving your client’s best interest by spending more money on a new EPO filing having an identical disclosure to that of the priority EPO first-filing? The fact that improved specifications are subsequently filed supports the conclusion that First-Filings are for the most part lower-odds crapshoot and not just expensive place-holders, as you seem to suggest.

Your suggestion of comparing EPO first-filings to U.S. provisional applications has some merit. However, it misses the entire picture of the fundamental differences in the role played by provisional applications in our invention-date-based priority system. It may come as a shock to Gene, but we value the role of provisional applications. We also use them in ways that are mostly unknown to outside patent practitioners who are not involved with our R&D engineering management processes.

First, we recognize that under current U.S. patent law, a provisional application is only a single evidentiary milestone in the chain of evidence that we rely on for protecting our inventive developments. Apart from lab notebooks, a whole body of engineering development records, component purchases, external correspondence, emails and internal memos, are also part of this evidentiary record. Clearly, we have no way of knowing in advance which specific bits of information would be important and these bits are impossible to capture in patent applications. In Europe, EPO first-filings constitute the only priority evidence, whereas provisional applications in the U.S. are but a component of the evidentiary record. Thus, some provisional applications are created and filed with the USPTO not only because of their elevated evidentiary weight in the chain, but also as “checklist” events for preserving all other bits of evidence in the chain. In establishing the evidentiary chain, we are also mindful of the diligence requirements and that a delay in filing a patent application will not be excused where activities were directed solely at commercialization and the improvements and refinements made are not disclosed in the final patent application. Lutzker v. Plet, 843 F.2d 1364, 1367 (Fed.Cir.1988). An equally problematic scenario involves patenting an invention too soon, only to discover that engineering changes were made after filing and the patent procured does not even cover the company’s actual product. Not only might precious resources be wasted but also all the advantages of an early filing will be lost.

Second, for reasons listed above, we also ascertain that we have a working notion of the claims we want to obtain, without which a disclosure in the provisional application cannot be properly and effectively made to begin with. Contrary to practice of some practitioners (who may charge only $1,500 for a provisional application), we build a subject-matter claim-tree, draft claims and ensure that they are well supported under §112 in provisional applications. The specification often goes through substantial revisions. As Steve Perlman correctly observed in a parallel thread, the resources and expenses to prepare and file such provisional applications is about 95% of non-provisional applications. “Cheap” provisional shortcuts only create a false sense of security. ( See Provisional Patents Are Quick, Cheap, and Worthless By Kirk Teska, at http://www.spectrum.ieee.org/may09/9007). An additional value we obtain from focusing on claims in such “checklist” events, is the attention and feedback for occasionally redirecting engineering activities. These redirected engineering activities can ensure that we have adequately addressed commercially relevant and patentable aspects of the invention and had generated the work-product required for enabling provisional disclosures. Many are unaware of these internal R&D resource allocation decisions we make, specifically in support of patent protection.

However, as startups with limited resources, our development schedules are often longer and we cannot afford to file provisional applications as frequently as large firms. Fortunately today, U.S. law requiring diligence in filing applications takes into account these specific resource-limitation circumstances. In patent invalidity due to abandonment disputes, the patent challenger bears the burden of proving that the patent applicant abandoned, suppressed and concealed its invention by clear and convincing evidence. Drawing all reasonable inferences from the chronology and the chain of evidentiary milestones established by the record, the court must conclude that it has been clearly and convincingly shown that the applicant abandoned its invention. This determination must include examining “the circumstances surrounding [the applicant’s] delay and the reasonableness of that delay”, Fujikawa v. Wattanasin, 93 F.3d 1559, 1568 (Fed.Cir.1996). The specific nature of the invention and the differing burdens applicants face in reducing their inventions to practice are relevant. A fact-finder could reasonably infer that a delay was reasonable given the complexity of the subject matter at issue and the fact that the applicant engaged in significant steps towards perfecting and commercializing the invention through much of the delay period. See Checkpoint Sys., Inc. v. U.S. Int’l Trade Com’n, 54 F.3d 756, 762 (Fed.Cir.1995), and the cases cited therein. These pre-filing steps are gauged against reasonable allocation of resources available in our business and a court’s conclusion of abandonment, suppression or concealment depends on the total facts of each case. DuPont v. Phillips Petroleum, 849 F.2d 1430, 1436 n.5 (Fed. Cir.1988). Our startup companies and our investors rely on this existing law as mitigating some of the risks of losing patent protection when we embark on costly developments.

Unlike filing-date-based priority laws in foreign countries where a “one size fits all” approach is used for administrative convenience, U.S. patent law is based on the equitable search for all reasonably relevant evidence surrounding the specific circumstances of the invention, its creation and ownership as a patent property right. Is it more complex and messy in a relatively minute number of cases arising in disputes? – Of course it is. However, in its operation in the vast majority of inventions that are not in dispute, it is the least disruptive or intrusive, as it relies on our existing development records. [Proponents of FTF who argue that it will save resources because inventors would need keep no invention records and notebooks, are simply ignorant of well-structured R&D and engineering processes that build such records anyway]. Importantly, this equitable search for all reasonably relevant evidence surrounding the acquisition of property ownership rights under U.S. law is not unique to patent law. It is the hallmark of the American justice system on which we depend to protect all our other property ownership rights, and indeed all our rights. It is this protection under U.S. law that reduces the risks of investing in the creation and acquisition of property ownership rights in America. Investments in patent property ownership rights are no different. A transition in the U.S. away from those protections by adopting the filing-date-based amendments to §102 will be a transition merely for the sake of administrative convenience at the expense of judicial equity. It will single-out patent property ownership rights from all other property ownership rights in America as subject to fundamentally exogenous foreign legal principles that are incongruent, contrary and an anathema to American legal principles of equity.

Is this just the first step in a series of steps intended to dismantle the American legal system?

Bart, let me clarify first that the EPO second-filings I show in Figure 1 discussed above do not include Euro-PCT applications (which exhibit even a lower abandonment rate than that shown for EPO second filings). Second, I am not sure how your specific firm uses first-filings at the EPO, but I have looked at some of the abandoned EPO first-filed priority applications to which priority is claimed in subsequent filings. In virtually all the cases I have seen (and this was by no means a scientific survey), the subsequent application had a related but different (and often expanded and more detailed) specification. The question arises as to why one would abandon an EPO application only to file a second application with the same disclosure? I suggest to you that although, as you say, applicants have not abandoned their inventions, they later discovered aspects of their inventions that require new claims, which may not have been well-supported by their first-filed EPO specification. Would you be serving your client’s best interest by spending more money on a new EPO filing having an identical disclosure to that of the priority EPO first-filing? The fact that improved specifications are subsequently filed supports the conclusion that First-Filings are for the most part lower-odds crapshoot and not just expensive place-holders, as you seem to suggest.

Your suggestion of comparing EPO first-filings to U.S. provisional applications has some merit. However, it misses the entire picture of the fundamental differences in the role played by provisional applications in our invention-date-based priority system. It may come as a shock to Gene, but we value the role of provisional applications. We also use them in ways that are mostly unknown to outside patent practitioners who are not involved with our R&D engineering management processes.

First, we recognize that under current U.S. patent law, a provisional application is only a single evidentiary milestone in the chain of evidence that we rely on for protecting our inventive developments. Apart from lab notebooks, a whole body of engineering development records, component purchases, external correspondence, emails and internal memos, are also part of this evidentiary record. Clearly, we have no way of knowing in advance which specific bits of information would be important and these bits are impossible to capture in patent applications. In Europe, EPO first-filings constitute the only priority evidence, whereas provisional applications in the U.S. are but a component of the evidentiary record. Thus, some provisional applications are created and filed with the USPTO not only because of their elevated evidentiary weight in the chain, but also as “checklist” events for preserving all other bits of evidence in the chain. In establishing the evidentiary chain, we are also mindful of the diligence requirements and that a delay in filing a patent application will not be excused where activities were directed solely at commercialization and the improvements and refinements made are not disclosed in the final patent application. Lutzker v. Plet, 843 F.2d 1364, 1367 (Fed.Cir.1988). An equally problematic scenario involves patenting an invention too soon, only to discover that engineering changes were made after filing and the patent procured does not even cover the company’s actual product. Not only might precious resources be wasted but also all the advantages of an early filing will be lost.

Second, for reasons listed above, we also ascertain that we have a working notion of the claims we want to obtain, without which a disclosure in the provisional application cannot be properly and effectively made to begin with. Contrary to practice of some practitioners (who may charge only $1,500 for a provisional application), we build a subject-matter claim-tree, draft claims and ensure that they are well supported under §112 in provisional applications. The specification often goes through substantial revisions. As Steve Perlman correctly observed in a parallel thread, the resources and expenses to prepare and file such provisional applications is about 95% of non-provisional applications. “Cheap” provisional shortcuts only create a false sense of security. ( See Provisional Patents Are Quick, Cheap, and Worthless By Kirk Teska, at http://www.spectrum.ieee.org/may09/9007). An additional value we obtain from focusing on claims in such “checklist” events, is the attention and feedback for occasionally redirecting engineering activities. These redirected engineering activities can ensure that we have adequately addressed commercially relevant and patentable aspects of the invention and had generated the work-product required for enabling provisional disclosures. Many are unaware of these internal R&D resource allocation decisions we make, specifically in support of patent protection.

However, as startups with limited resources, our development schedules are often longer and we cannot afford to file provisional applications as frequently as large firms. Fortunately today, U.S. law requiring diligence in filing applications takes into account these specific resource-limitation circumstances. In patent invalidity due to abandonment disputes, the patent challenger bears the burden of proving that the patent applicant abandoned, suppressed and concealed its invention by clear and convincing evidence. Drawing all reasonable inferences from the chronology and the chain of evidentiary milestones established by the record, the court must conclude that it has been clearly and convincingly shown that the applicant abandoned its invention. This determination must include examining “the circumstances surrounding [the applicant’s] delay and the reasonableness of that delay”, Fujikawa v. Wattanasin, 93 F.3d 1559, 1568 (Fed.Cir.1996). The specific nature of the invention and the differing burdens applicants face in reducing their inventions to practice are relevant. A fact-finder could reasonably infer that a delay was reasonable given the complexity of the subject matter at issue and the fact that the applicant engaged in significant steps towards perfecting and commercializing the invention through much of the delay period. See Checkpoint Sys., Inc. v. U.S. Int’l Trade Com’n, 54 F.3d 756, 762 (Fed.Cir.1995), and the cases cited therein. These pre-filing steps are gauged against reasonable allocation of resources available in our business and a court’s conclusion of abandonment, suppression or concealment depends on the total facts of each case. DuPont v. Phillips Petroleum, 849 F.2d 1430, 1436 n.5 (Fed. Cir.1988). Our startup companies and our investors rely on this existing law as mitigating some of the risks of losing patent protection when we embark on costly developments.

Unlike filing-date-based priority laws in foreign countries where a “one size fits all” approach is used for administrative convenience, U.S. patent law is based on the equitable search for all reasonably relevant evidence surrounding the specific circumstances of the invention, its creation and ownership as a patent property right. Is it more complex and messy in a relatively minute number of cases arising in disputes? – Of course it is. However, in its operation in the vast majority of inventions that are not in dispute, it is the least disruptive or intrusive, as it relies on our existing development records. [Proponents of FTF who argue that it will save resources because inventors would need keep no invention records and notebooks, are simply ignorant of well-structured R&D and engineering processes that build such records anyway]. Importantly, this equitable search for all reasonably relevant evidence surrounding the acquisition of property ownership rights under U.S. law is not unique to patent law. It is the hallmark of the American justice system on which we depend to protect all our other property ownership rights, and indeed all our rights. It is this protection under U.S. law that reduces the risks of investing in the creation and acquisition of property ownership rights in America. Investments in patent property ownership rights are no different. A transition in the U.S. away from those protections by adopting the filing-date-based amendments to §102 will be a transition merely for the sake of administrative convenience at the expense of judicial equity. It will single-out patent property ownership rights from all other property ownership rights in America as subject to fundamentally exogenous foreign legal principles that are incongruent, contrary and an anathema to American legal principles of equity.

Is this just the first step in a series of steps intended to dismantle the American legal system?

Bart, let me clarify first that the EPO second-filings I show in Figure 1 discussed above do not include Euro-PCT applications (which exhibit even a lower abandonment rate than that shown for EPO second filings). Second, I am not sure how your specific firm uses first-filings at the EPO, but I have looked at some of the abandoned EPO first-filed priority applications to which priority is claimed in subsequent filings. In virtually all the cases I have seen (and this was by no means a scientific survey), the subsequent application had a related but different (and often expanded and more detailed) specification. The question arises as to why one would abandon an EPO application only to file a second application with the same disclosure? I suggest to you that although, as you say, applicants have not abandoned their inventions, they later discovered aspects of their inventions that require new claims, which may not have been well-supported by their first-filed EPO specification. Would you be serving your client’s best interest by spending more money on a new EPO filing having an identical disclosure to that of the priority EPO first-filing? The fact that improved specifications are subsequently filed supports the conclusion that First-Filings are for the most part lower-odds crapshoot and not just expensive place-holders, as you seem to suggest.

Your suggestion of comparing EPO first-filings to U.S. provisional applications has some merit. However, it misses the entire picture of the fundamental differences in the role played by provisional applications in our invention-date-based priority system. It may come as a shock to Gene, but we value the role of provisional applications. We also use them in ways that are mostly unknown to outside patent practitioners who are not involved with our R&D engineering management processes.

First, we recognize that under current U.S. patent law, a provisional application is only a single evidentiary milestone in the chain of evidence that we rely on for protecting our inventive developments. Apart from lab notebooks, a whole body of engineering development records, component purchases, external correspondence, emails and internal memos, are also part of this evidentiary record. Clearly, we have no way of knowing in advance which specific bits of information would be important and these bits are impossible to capture in patent applications. In Europe, EPO first-filings constitute the only priority evidence, whereas provisional applications in the U.S. are but a component of the evidentiary record. Thus, some provisional applications are created and filed with the USPTO not only because of their elevated evidentiary weight in the chain, but also as “checklist” events for preserving all other bits of evidence in the chain. In establishing the evidentiary chain, we are also mindful of the diligence requirements and that a delay in filing a patent application will not be excused where activities were directed solely at commercialization and the improvements and refinements made are not disclosed in the final patent application. Lutzker v. Plet, 843 F.2d 1364, 1367 (Fed.Cir.1988). An equally problematic scenario involves patenting an invention too soon, only to discover that engineering changes were made after filing and the patent procured does not even cover the company’s actual product. Not only might precious resources be wasted but also all the advantages of an early filing will be lost.

Second, for reasons listed above, we also ascertain that we have a working notion of the claims we want to obtain, without which a disclosure in the provisional application cannot be properly and effectively made to begin with. Contrary to practice of some practitioners (who may charge only $1,500 for a provisional application), we build a subject-matter claim-tree, draft claims and ensure that they are well supported under §112 in provisional applications. The specification often goes through substantial revisions. As Steve Perlman correctly observed in a parallel thread, the resources and expenses to prepare and file such provisional applications is about 95% of non-provisional applications. “Cheap” provisional shortcuts only create a false sense of security. ( See Provisional Patents Are Quick, Cheap, and Worthless By Kirk Teska, at http://www.spectrum.ieee.org/may09/9007). An additional value we obtain from focusing on claims in such “checklist” events, is the attention and feedback for occasionally redirecting engineering activities. These redirected engineering activities can ensure that we have adequately addressed commercially relevant and patentable aspects of the invention and had generated the work-product required for enabling provisional disclosures. Many are unaware of these internal R&D resource allocation decisions we make, specifically in support of patent protection.

However, as startups with limited resources, our development schedules are often longer and we cannot afford to file provisional applications as frequently as large firms. Fortunately today, U.S. law requiring diligence in filing applications takes into account these specific resource-limitation circumstances. In patent invalidity due to abandonment disputes, the patent challenger bears the burden of proving that the patent applicant abandoned, suppressed and concealed its invention by clear and convincing evidence. Drawing all reasonable inferences from the chronology and the chain of evidentiary milestones established by the record, the court must conclude that it has been clearly and convincingly shown that the applicant abandoned its invention. This determination must include examining “the circumstances surrounding [the applicant’s] delay and the reasonableness of that delay”, Fujikawa v. Wattanasin, 93 F.3d 1559, 1568 (Fed.Cir.1996). The specific nature of the invention and the differing burdens applicants face in reducing their inventions to practice are relevant. A fact-finder could reasonably infer that a delay was reasonable given the complexity of the subject matter at issue and the fact that the applicant engaged in significant steps towards perfecting and commercializing the invention through much of the delay period. See Checkpoint Sys., Inc. v. U.S. Int’l Trade Com’n, 54 F.3d 756, 762 (Fed.Cir.1995), and the cases cited therein. These pre-filing steps are gauged against reasonable allocation of resources available in our business and a court’s conclusion of abandonment, suppression or concealment depends on the total facts of each case. DuPont v. Phillips Petroleum, 849 F.2d 1430, 1436 n.5 (Fed. Cir.1988). Our startup companies and our investors rely on this existing law as mitigating some of the risks of losing patent protection when we embark on costly developments.

Unlike filing-date-based priority laws in foreign countries where a “one size fits all” approach is used for administrative convenience, U.S. patent law is based on the equitable search for all reasonably relevant evidence surrounding the specific circumstances of the invention, its creation and ownership as a patent property right. Is it more complex and messy in a relatively minute number of cases arising in disputes? – Of course it is. However, in its operation in the vast majority of inventions that are not in dispute, it is the least disruptive or intrusive, as it relies on our existing development records. [Proponents of FTF who argue that it will save resources because inventors would need keep no invention records and notebooks, are simply ignorant of well-structured R&D and engineering processes that build such records anyway]. Importantly, this equitable search for all reasonably relevant evidence surrounding the acquisition of property ownership rights under U.S. law is not unique to patent law. It is the hallmark of the American justice system on which we depend to protect all our other property ownership rights, and indeed all our rights. It is this protection under U.S. law that reduces the risks of investing in the creation and acquisition of property ownership rights in America. Investments in patent property ownership rights are no different. A transition in the U.S. away from those protections by adopting the filing-date-based amendments to §102 will be a transition merely for the sake of administrative convenience at the expense of judicial equity. It will single-out patent property ownership rights from all other property ownership rights in America as subject to fundamentally exogenous foreign legal principles that are incongruent, contrary and an anathema to American legal principles of equity.

Is this just the first step in a series of steps intended to dismantle the American legal system?

New section 102 does not give new options that are “better, cheaper, or faster.” All the techniques available under S.515, and all that Gene advocates, are available today. For those situations in which those techniques are “better, faster and cheaper,” they are being used (I use Gene’s techniques exactly the way Gene suggests, when it is the “better and cheaper” way).

The problem is that new section 102 takes away options. Options have value — keeping options open is almost always a good business strategy. The choice of whether to act or not, to avoid committing resources, is valuable separate from anything else–one of the key themes in a management MBA is learning to evaluate how and when to act vs. preserving the option to act or not act. The option to rely on the grace period is far more valuable to the more innovative company, and to the smaller or earlier stage company, than to the multinational market incumbent, for reasons EG outlines.

Gene, the flaw in your argument is that you fail to recognize that there are some cases where your approach is not better, cheaper, faster–unless you’re taking the position that you know more about running folks’ businesses than they do? I emphatically do accept that cases exist in which the approach you advocate is better, and it’s better that you not attribute to me ideas that I do not hold. But it’s also indisputable that S.515 takes away “better, cheaper, faster” options for other cases, and forces a “one size fits all” approach. The companies for which the current options are most valuable are the most innovative companies, the companies that rely most heavily on the patent system.

David

I even accept that first-to-file, in the narrow, literal sense – first-to-file vs. first to invent confined to only a 102(g) priority contest, in isolation from the rest of the changes in proposed s 102 – could well be “better, cheaper and faster.”

But the objective evidence – based on the “revealed preferences” in rational economic decisions that businesses actually make – is that over-filing of provisionals, being forced to make filing decisions early rather than after more information comes in – is lots more expensive. The huge cost savings of NOT FILING until you know which inventions are bad and which are good, available under current law and revoked under new s 102 – is the issue I’m trying to focus you on, and that you are aggressively ducking.

I am emphatically NOT speaking from the context of “large companies” – I am speaking from the point of view of the small companies that I have represented in the past, and get financing for today. New s 102 has benefits for large companies and for market incumbents, largely in terms of entrenchment and hobbling of disruptive new entrants. It’s the small companies that get hurt.

David

1. I agree with David B. that first to invent (FTI) versus first to file (FTF) is no longer a patent interference issue, but really a “will there be a grace period” issue. When my dad was in active practice, there were far more interferences than there are now. In fact, my dad was well aware of the poor odds for the second-to-file being determined to be the FTI, as well as the fact that the individual or small business couldn’t afford the expense of a contested interference. A number of these interferences were also simply “ownership disputes” in the disguise of priority contests, or involved “derivation” (i.e., invention stealing) situations. The thought that FTI allows an individual/small business who is tardy to file a chance to win a contested interference (more like someone winning a state lottery) is simply a “red herring” on this issue.

2. I’ll also admit a certain amount of ambivalence on how I view FTI versus FTF based on my career experience. How you view FTI versus FTF will also depend on whether your business relies primarily on the U.S. market, or on the global market. When I was in large corporate practice (approximately the first half of my career), we truly lived in an FTF world because we competed not just in the U.S., but globally. (Our competitors were also global which meant that most of those competitors were already living with a FTF environment.) That meant dealing effectively with “absolute novelty” countries/regions like Europe in terms of prompt filings before potentially “self-inflicted wounds” due to early market test exposures of technology. This situation was even more challenging (and expensive) before the days of U.S. provisionals. In the large global corporate world, treating the situation as a “virtual” FTF was simply the cost of doing business. Accordingly, going to an FTF world in the U.S. was just recognizing the reality of the large global corporate world.

3. Now that I’ve been in private practice for over 10 years, my views on this FTI versus FTF debate have undergone adjustment. The individual, and more importantly, the small business (or a non-profit R&D organization like a university), is at a significant disadvantage in a FTF world. This goes beyond being “ignorant” of the “no grace period” issue outside the U.S. The true “killer” here is the stringent “written description”/”enablement” requirements of the U.S. (the rest of the world, including Europe, is getting tougher on their versions of these requirements). The fact is creating a patent application, even if it’s only a provisional, requires the small business to invest time (David B. is right on this) to meet these requirements, as well as to make sure that the claim set correctly covers. Time spent by the small business in terms of internal resources devoted to application drafting is money spent by the small business, beyond just the attorney/government fee costs. Also, the idea that the patent attorney can draft such a patent application in a “vacuum” without the expenditure internal time resources by the small business usually results, in my experience, in an inferior patent application (believe, I’ve been there).

4. Coupling FTF with stringent “written description”/”enablement” requirements creates a fairly “lethal” combination for the small business. (In my opinion, Congress talks way too much about individuals being screwed by FTF and not enough about the imposition on R&D-intensive small business which is where most of the significant innovation comes from.) The simply don’t have the time (or money) resources needed to do extensive patent filings that meet stringent “written description”/”enablement” requirements in the relatively short periods of time that FTF realities impose. (We found this issue to be daunting even in the large global corporate world.) Put differently, FTF creates an environment of “hurried application drafting” before enough time (or experimentation) can normally be spent to understand the true scope of the technology. (As Ron K. notes that also creates more poorly developed applications for the respective patent offices to consider.) While large businesses can endure such inefficiencies and costs, small businesses normally cannot.

5. Net: if you live in the large global business world, FTF is the reality you’re willing to accept. But if you’re a primarily a U.S.-based small business that relies upon patent IP to survive, you would much prefer to have an FTI (“grace period”) world, even if it’s only in the U.S. My initial 2 cents for what it’s worth.

And you ignore the fact that there is a better, cheaper, faster way about protecting inventions and filing patent applications. Like the many large companies that want to keep the old model and refuse to consider models that are better, you want to keep hold on what you know even though we all know the system is broken.

If you and your clients are not interested in a better strategy to take advantage of first to file then that is fine. You will, however, get no sympathy from me.

-Gene