How?

For some reason your comment from 3/11 above got caught up in spam. I just approved it.

I agree with you that retroactivity is not a good idea. I plan on writing about that over the next couple days.

I don’t know what the answer is on 131, but I don’t see any reason why you cannot have a first inventor to file system and still keep 131. I don’t think you could do that with the proposed 102(b), but what does that even mean? It is horribly sloppy.

If you have any language suggestions for the proposed 102(b) I am all ears!

-Gene

I’m sorry for the confusion. I thought I had made my view very very very clear, that my issue is not first-to-file as between two inventors who both file at about the same time, it’s weak grace period and loss of right for even a single filing inventor.

You’ve said repeatedly and clearly that, in your legal judgment, “wait and see” and taking advantage of the current grace period is so fatally bad that you have no gripes with Congress taking away the option to wait. I try to give my clients a broad range of options and an assessment of risks and benefits, and let them make their own cost and risk balancing. I don’t think that every business should exercise every option, I don’t advocate “wait and see” routinely. But different businesses need to be able to run their businesses their own way, and I don’t want congress telling them that “file early and file often” is the only way to use the patent system.

I’ve raised the “poor quality of rushed applications” issue, and I’m really pleased to see it here.

Wonderful day!

You say “and now — hurrah! — you’ve agreed.”

Are you for real? I have been saying this all along, for many years. For you to act like I am now coming around to your position is absurd. Readers of IPWatchdog know it, and so do you. You are unbelievable.

What I suggest you do is articulate your position better and focus on the grace period and stop complaining about first to file. Even you now admit that first to file is not the problem, which is a major deviation from your articulated positions here and elsewhere on the Internet. Perhaps this is what you always wanted to say, but wanting to convey a message is very different than conveying a message.

I will always believe it is in the best interest of a company to file a patent application as soon as possible. If the companies you represent want to take risks that is fine, but lets not pretend you work with independent inventors, OK?

Finally, you and most everyone else continues to miss the major flaw in this legislation. Right now we have a first to invent system where Interferences are rare. If we move to a first to invent system it will force inventors to file quickly on whatever they can adequately describe. There will be a mad dash to the Patent Office and patent filings should explode in numbers. The applications will likely be bite-size, which is good for the Patent Office, but in a rush to the Patent Office what will happen is many applications will not satisfy 35 USC 112. So the Patent Office and the courts will be charged with undertaking the enormous work load of determining who was actually in possession of the invention as evidenced by patent applications filed. What will happen is rights will be split between and among many players because just because you were first to file and can prove conception and possession of A, doesn’t mean you proved conception and possession of B through Z, which the second to file was in possession of when they filed later. So first filer will get A, second filers will get B through Z. So rather than a rare interference proceeding these types of disputes will be numerous. That will bog down the USPTO and the Courts.

Once patent reform passes those who are not employing an advanced provisional patent strategy will be the big losers. So big-tech and Mega-corporations will regret the day they ever supported this.

-Gene

> You engage in activities such as publication of your invention, offering for sale, public
> use or actually selling the invention. You now have 12 months within which to file a
> patent application. If you file a provisional patent application you have another 12 months
> within which to file a nonprovisional patent application. So a lot of times I recommend
> to inventors they take it step by step and pursue their invention in a business responsible
> manner, testing, perfecting and protecting in a step by step approach. If at some point
? the invention is not working out cut your losses and move on. If you engaged in a step
> by step approach rather than putting all your money down at first for a nonprovisional
> patent application, you will have conserved resources for your next invention.

Gene! You’ve got it! Under current law, this is a strategy with acceptable business risk. Statistics show a 3% or so risk of losing patent rights. Businesses take 3% risks all the time. In past postings, I’ve noted that this is sometimes a perfectly resonable thing to do, and now — hurrah! — you’ve agreed.

Under the new bill, if anyone publishes or discloses the invention but doesn’t file a patent applcation, even if derived from our inventor, now the inventor has to show derivation of every single such publication or disclosure. Thus, if our inventor A tells B, then B tells C and D and E and F and G, before A files, now A has to prove derivation by each of C D E F and G.

How are you going to prove it? The bill gives the inventor no subpoena power, and no access to a section 146 civil action. So A has to prove the acts or mental state of C D E F and G with no access to any evidence. Good luck.

Even if A somehow marshals the facts in evidentiary form so A can show derivation to a preponderance, a derivation proceeding is the most expensive form of an interference, and is fiercely expensive in the UK. One recent case noted that a derivation proceeding had taken 8 years.

We have only a dozen or so derivations proceedings per year in the US under current law, because they only arise when the deriver also files a patent application. Under the new law, there’s no need for the deriver to file to trigger a derivation inquiry. The new law requires thousands, maybe tens of thousands, of derivation showings per year.

This is what I mean by a grace period that is so tenuous that no one can rely on it.

Only as far as infringers are concerned.

Patent reform is a fraud on America. It is patently un-American.

I saw that this morning. I am trying to track some more information down. Seems like the first monkey wrench on patent reform. If this gets traction it would seem to mean that patent reform will get pushed back or if it goes forward it would have to be without first-to-file. Stay tuned!

-Gene

http://www.patentdocs.org/2010/03/senator-landrieu-introduces-legislation-requiring-study-on-effects-of-firsttofile-provision-.html

Gene,

You hit on the most disturbing aspect of the whole “grace period” issue which my patent attorney brother Mark also noted. This section is exceedingly “sloppy,” and until it’s straightened out gives great pause for whether there’s a hidden “trap door” that some unsuspecting inventor or small business will fall through.

I’m also still not convinced that changing from a “first to invent” to a “first to file” system (like ROW) is in America’s best interest for small business innovation and American job creation. Do understand that you’re correct that hesitation filingcan be potentially disastrous and even fatal. But David Boundy, who I and others respect much, has noted the problem of encouraging premature filings that simply add cost but will eventually be abandoned because the technology (or market) doesn’t pan out.

If the U.S. does go to a “first to file” system, provisionals are going to become even more important. Even more important is education of small entity inventor that provisionals are an excuse for writing a sloppy patent spec. I’ve argued that for over 10 years, and with a “first to file” system, that advice becomes even more important.

I respect your point of view, but I still feel “first to file” benefits much more largerr multinational corporations that are already dealing with a de facto “first to file” system in their global market. I still look at “what does this mean to America?” and I frankly don’t see the benefit for America, especially American smal entities. For many small entities, the U.S. market is enough, and “first to invent” gives them the opportunity to wait before investing filing $ in what may be (as David Boundy argues),. Even with “first to invent, they would be still well advised to not to wait to long or the full year grace period for the reasons you give.