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Senate to Vote on Patent Reform, First to File Fight Looms


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: February 27, 2011 @ 12:24 pm
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It appears as if the time has finally arrived for an up or down vote on patent reform in the United States Senate.  It has been widely reported that the full Senate will take up patent reform upon returning from recess this week, and it is now believed by many on the inside that the Senate will take up patent reform on Monday, February 28, 2011, the first day back.  Some are even anticipating that the Senate will vote on patent reform bill S. 23 late in the day on Monday, February 28, 2011.  See Crunch Time: Call Your Senators on Patent Reform.  That would seem exceptionally quick, particularly given the rancorous issues and Amendments still to be presented, but nothing will surprise me.

As we get closer to a vote in the Senate the rhetoric of those for and against patent reform is heating up to a fever pitch.  The big fight, once again, is over first to file, with battle lines drawn that run extremely deep.  Senator Diane Feinstein (D-CA) is expected to file an Amendment stripping the first to file provisions, which could be supported by Senate Majority Leader Harry Reid (D-NV).

Before tackling the first to file issue I would like to point out that regardless of whether first to file is supported or opposed everyone, and I do mean everyone, unanimously agrees that the USPTO should be allowed to keep the fees it collects to reinvest in the agency and to do the work promised.  An overwhelming majority also seem to support giving the USPTO fee setting authority.  Fee setting authority is present in S. 23 (see Section 9) and Senator Tom Coburn plans to introduce an Amendment that would once and for all eliminate fee diversion and let the USPTO keep the fees it collects.  So while there is argument about first to file hopefully we won’t lose sight of the fact that most everyone is on the same team relating to fixing the USPTO.

With respect to first to file, in practical effect we already have a first inventor to file system. For example, since the start of fiscal year 2005 on October 1, 2004, there have been over 2.9 million patent applications filed and only 502 Interferences decided.  An Interference Proceeding occurs when multiple inventors file an application claiming the same invention, and is the hallmark of a first to invent system because it is possible in the United States to file a patent application second and then be awarded the patent if the second to file can demonstrate they were the first to invent.  On top of the paltry 502 Interferences over nearly 7 years a grand total of 1 independent inventor managed to demonstrate they were the first to invent, and a grand total of 35 small entities were even involved in an Interference.  A small entity can be an independent inventor, university, non-profit or a company with 500 or fewer employees.  Thus, we have a de facto first to file system and the “first to invent” system that supposedly favors independent inventors is overwhelmingly dominated by large companies with over 500 employees.  See chart below.

On top of this, the independent inventors and small entities, those typically viewed as benefiting from the current first to invent system, realistically could never benefit from such a system.  To prevail as the first to invent and second to file you must prevail in an Interference proceeding, and according to 2005 data from the AIPLA the average cost through an interference is over $600,000.  So lets not kid ourselves, the first to invent system cannot be used by independent inventors in any real, logical or intellectually honest way, as supported by the reality of the numbers above.  So first to invent is largely a “feel good” approach to patents where the underdog at least has a chance, if they happen to have $600,000 in disposable income to invest on the crap-shoot that is an Interference proceeding.

I will acknowledge, however, that one of the best arguments I have seen against first to file was prepared by Hank Nothhaft, President & CEO of Tessera and a frequent contributor to IPWatchdog.com.  In his op-ed in The Hill Hank concludes by asking: “Why risk that by weakening the incentives for startups?”  As I can point to the fact that we have a de facto first to file system already, Hank and others can say — so why the need for change?  I readily acknowledge that the small c conservative thing to do, which I normally promote, would be to do nothing and keep the status quo.  That is a fine argument, but it would keep the USPTO devoting precious resources on a complex Interference system that really mirrors a first to file system anyway.  Of course, if patent reform gives the USPTO fee setting authority and an end to fee diversion then the resources problem isn’t nearly the concern and Congress could layer on responsibilities for the Patent Office and Team Kappos could deliver and still reduce the backlog.

Some others who challenge the first to file changes in the patent reform bill say the Interference analysis above is misplaced because first to file is not about whether the first to invent will obtain the patent.  As illogical as that sounds, they have a point.  Notice, however, that the Interference data does clearly demonstrate there is no need whatsoever for a first to invent system in the United States.  Thus, many who challenge the first to file system don’t seem to question that first to file is acceptable, but they do not like the loss of the familiar 12 month grace period.

The truth is, however, that relying on a 12 month grace period is extremely dangerous, but it does have its place.  As Bryan Lord correctly explains in Crunch Time: Call Your Senators on Patent Reform, many start-up companies rely on the grace period, which is critical “to companies that rely upon external collaborations or have comparatively limited resources.”  There is absolutely no argument with the fact that a grace period does factor into the equation for small businesses and start-up companies that are strapped for cash and already need to make choices about how much, and which, innovations to protect.  I also like Lord’s questioning the rush to harmonize.  I always like to point out that harmonization is fine, but why can’t we do what makes for a good system and not just what everyone else does.  Lets harmonize what the world does better and lets lobby the world to adopt what our system clearly gets right.

Having said all of this, there is absolutely no reason why we cannot move from a first to invent system to a first inventor to file system that would still retain a real and substantial grace period and still retain the right for patent applicants to swear behind references to demonstrate an earlier date of invention, at least with respect to pieces of prior art that are not the progeny of earlier filed patent applications.

Regardless of of the disinformation that is widespread, the currently proposed S. 23 does, in fact, have a grace period.  The grace period would be quite different than what we have now and would not extend to all third party activities, but many of the horror stories say that if someone learns of your invention from you and beats  you to the Patent Office they will get the patent.  That is simply flat wrong.

As it stands now, the currently proposed 102 in S. 23 says, in relevant part:

§102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Looking at the proposed 102(b), it becomes clear that despite the claims of critics there is a grace period within S. 23.  I find it sad, yet amusing, that some who challenge the bill simply refuse to quote 102(b), and even outright claim “there is no grace period.”  Obviously, there is a grace period.

The proposed 102(b) seeks to eliminate from the universe of prior art disclosures made by the inventor or which owe their substance to the inventor.  So if the inventor discloses his or her invention less than a year before filing  a patent application the patent can still be awarded.  If someone learns of the invention from the inventor and discloses less than a year before filing a patent application, the patent can likewise still be awarded.  What is notably missing here are several things.  First, a definition for “disclosure.”  Second, an exception that applies to third-party activities where the third party acted without learning of information from the inventor but yet did not file a first application themselves.  So the grace period set up by proposed 102(b) excepts disclosures (whatever they are) made by or through an inventor less than 1 year before the inventor files, but does not extend to disclosures (whatever they are) made by others less than 1 year before the inventor files.

The proposed 102(b) is a departure from the current law of novelty.  Nevertheless, it is simply wrong to claim there is no grace period in an attempt to manipulate independent inventors, small businesses and others to support elimination of first to file.

In any event, under the current 102(b), a patent applicant is entitled to a patent unless —

the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…

Under current 102(b) an inventor can create their own bar to patentability as a result of activity such as publication, public use in the US or sale in the US if it occurs more than 1 year before a US patent application is filed.  A bar can likewise be created if a third party, either known or unknown to the inventor, engages in the same activity more than one year before a US patent application is filed.  What this necessarily means, and has long been interpreted to mean, is that a patent can be awarded so long as the invention has not been patented, published, on public use in the US or on sale in the US for more than 1 year.  The current 102(b) provides a solid grace period that applies across the board, the proposed 102(b) does not.

Independent inventors and start-ups are rightly concerned about whether they will be able to enjoy a grace period relative to third party activities.  They are rightly concerned to wonder whether the term “disclosure” in 102(b) would mean that the exception applied to their own public use or sale activities, which is anything but clear.  Inventors and start-ups are also rightly concerned about whether they will be able to swear behind and prove prior inventorship relative to prior art not associated with an earlier filed patent application.  In short, I see no reason why we cannot have a first inventor to file system that does away with Interference proceedings, awards patents to the first inventor who files a patent application but which also preserves a 12 month grace period under current law.

Of course, if first to file as stated in 102(b) becomes the law of the land it will encourage independent inventors  to do exactly what they should do, which is file patent applications earlier in the process.  I hear the most ridiculous strategies from independent inventors who almost universally don’t understand the requirements to prove they were the first to invent, see Much Ado About Nothing, so a simpler system that they can understand will no doubt benefit them.  Small businesses and start-ups should likewise file earlier in the process, and frankly that is why there is so much opposition to first to file.

Small businesses and start-up companies do need a grace period to try and figure out what to pursue, and the proposed grace period should keep much of the law in its place will not be as widespread as currently enjoyed.  While resources are always limited with start-ups, I think they incorrectly argue that there is an over-burdensome cost in terms of both money and time associated with filing provisional patent applications to preliminarily protect rights.  In fact, I have offered to demonstrate just how the preparation and filing of streamlined provisional patent applications can be accomplished to many of those making the argument that it is too costly and time consuming to prepare quality provisional patent applications.  As yet I have had no takers.  So if cost and time are such concerns why aren’t they willing to consider a better, faster, cheaper way.

I think Bryan Lord’s call to reach out to your Senators is absolutely the right thing to do.  Get involved and be heard!

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About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

44 comments
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  1. “With respect to first to file, in practical effect we already have a first inventor to file system.”

    If this was true then why do big corporations want the change? The reason is that they gain a multitude of other advantages which disadvantage small entity inventors.

    Excerpt from Pate Choate’s 2006 House Testimony on F2F

  2. Ron-

    I find it difficult to believe that you cannot wrap your head around the objectively true statement that you quote from the article. We clearly have a de facto first to file system, that is not open to debate. Your paranoia about big corporations cannot change the truth.

    Perhaps you should actually read the excerpt from Choate. It is clear from his testimony, which seems quite dated, that even back then there was a de facto first to file system. How did you miss that? Did you actually read Choate’s statement? Choate questions whether given the extremely small numbers of interferences a change to first to file is warranted. As I explain in the article that is a fair argument, but not one based on paranoia.

    If you don’t like patent reform that is fine. Articulate a coherent reason that doesn’t require a suspension of reality and takes into consideration unassailable facts.

    -Gene

  3. Gene,
    While it is all fine to talk about the exceptions in S. 23 which result in a grace period for only *some* circumstances, one must not avoid the gaping hole with respect to events that involve no public disclosure. Merely proclaiming that S. 23 has some grace period provisions doesn’t cut it. Under S. 23, an inventor in these circumstances would be barred from getting a U.S. patent – where no bar exists for obtaining a foreign patent. For a full discussion, see http://ipwatchdog.com/2011/02/25/gary-michelsons-letter-to-congress-supporting-patent-reform/id=15540/#comment-19700.

  4. NOTE…

    The last comment of Ron Riley has been deleted. I don’t mind him suggesting I don’t understand what I am talking about, but his unfounded accusations that David Kappos is corrupt are no longer tolerable. After repeated warnings to Riley to deal with facts and not unfounded and uncorroborated speculation I have decided to ban him from commenting on IPWatchdog.com.

  5. The distinction between a FTF with a grace period and a FTI system is hard to define, and is indeed debatable, and depends somewhat upon your perspective. During Bryan’s testimony before Congress during the 2007 Patent Reform effort, he said essentially that it would probably be very prudent to make very sure that Congress was *First doing no Harm* before they passed that bill. For me the FTI scenario is somewhat like locking the front and back doors to keep the honest folks honest. I once lived on a small island, where 90% of all locks were never locked, because if somebody wanted to come in, they could, without having to break anything in the process, as it was very rural and nobody would ever steal anything. Unfortunately those days are long gone, so I prefer to lock my doors just in case these days. We have seen some evidence that a FTF system didn’t seem to help at all in Canada and probably hindered things, so why take a chance on it here when the economy is still so shaky?

    Stan~

  6. A major problem I have with 102b (1) … is the extreme difficulty of an Applicant in establishing acceptable proof that the third party “obtained” … especially with all the new “disclosure” technologies such as blogs; emails; social networking; audio; video; etc. What is being required of the Applicant … is too difficult to prove.

    The proposed 102b (1) needs to be reworded to something that is easier for Applicants to prove.

    For example, reword the proposed 102b (1) so that the Applicant who was First-to-File … only needs to establish that they “conceived” of the invention, before the disclosure by a third party.

    Interestingly, with this rewording, (to be safe) Applicants would still need to document conception but would no longer need to establish continuing diligence.

  7. For those that might have the time and the interest, the Senate session is being broadcast today on C-Span2 from 2:00-8:00PM Eastern.
    http://www.c-span.org/Live-Video/C-SPAN2/

    Stan-

  8. Ron-

    I pointed out that S. 23 has some grace period provisions because you said it had none.

    -Gene

  9. Gene,

    The same arguments you are making about first to file could have been made about the publication rule. However, the publication rule has done untold damage to US inventors, particularly those in start-ups and independent inventors. At the time the publication rule was proposed most patent applications were issued or published by 18 months. However, the pendency time has now doubled and increased more for some areas of technology. The only real justification for the first to file system is harmonization and the logical conclusion of harmonization will be to eliminate the grace period. It will also be used as an excuse to eliminate the need to name inventor on patent applications. These changes will hurt small inventors, which are the source of most new emerging technologies.

    The PTO resources argument is a Red Herring. The PTO is not suffering from a lack of resources because of interferences, it is because Congress is stealing inventors money for other government programs that give them more votes. The answer to the cost of interferences is not to eliminate them but to limit litigation costs. Just as the answer to the problem of hidden patent applications was not publication, but to require that patent application be examined in a timely manner.

    Publication is wrong because it breaks the social contract.
    First to File is wrong because it destroys any logical basis for patents. It turns patents into some sort of arbitrary government grant. Slipper slope issues are not just about being pragmatic. If the principles on which patents are based are completely eroded you will have people arguing that there is no logical basis for patents at all – and they will be right.

  10. Publication is wrong because it breaks the social contract.

    Amen.

    I would only add that the change in computing term from issue to earlliest claimed priority also nullifies the other argument for early publication – to ward off “true” submarining.

    If the principles on which patents are based are completely eroded you will have people arguing that there is no logical basis for patents at all

    Already happening at a great degree (hence the unbelievable commercial success of my Kool Aid sale).

    – and they will be right.
    This is not correct – they will still be wrong. Vigilant ignorance should not be rewarded with the notion that “they will be right”. What is called for, rather, is a focus (or a re-focus as the case may be) on those very same principles on which patents are based – suffering those who would close their eyes and ignore the basics of law, to suspend and banish the basic principles in order to support thier Dogma, their Cause, only greases that slippery slope. Adding the weight of visitors to the castle tower only hastens that tower’s collapse as the foundation spins in the shifting sands. Do not ignore the “Do Not Enter” signs psoted on such castle doors. Do not ignore the basics of patent law. Such ignorance is never right.

  11. They just announced that the Senate will take up the Patent Reform act first, right after the reading of President Washington’s fare well speach.
    The Senate session is being broadcast today on C-Span2 from 2:00-8:00PM Eastern.
    http://www.c-span.org/Live-Video/C-SPAN2/

    Stan-

  12. An out-of-the-box proposal: A “Penny” Provisional-Patent-Application (PPA) filing fee.
    Subtitle: Creating an electronic invention application” … that automatically includes an option for constructive reduction to practice.

    The USPTO lowers the fee for filing a PPA to a penny (no more than a dollar per PPA).
    Alternatively, inventors (and legal-reps) could file an unlimited number of PPA’s for a low subscription fee. Technology has dramatically reduced the cost of electronically accepting; digitally-signing; storing & sending an e-receipt … to pennies per PPA (as no human handing is required).

    This allows inventor(s) and/or legal representative(s) could continually file updated versions of their PPA’s after each revision affecting claims and/or enablement. Applicants could file updated PPAs several times in a very productive day or less frequently.

    Non-provisional Patent Applications could cite/select any subset of the possibly 100’s of PPA’s that were filed in the prior year (perhaps revise this to 18 months). The prior-art priority date of each claim … now goes back to the earliest updated PPA with support/enablement. Earlier PPA’s that have no useful support/enablement would be “effectively abandoned”. Since early PPA’s in the sequence may be more like raw inventor notebooks, an option to redact non-material matter from PPA’s could be allowed.

    Inventors can now become free from the current paper inventor notebooks. Third parties could provide invention software that automatically files each updated PPA with the USPTO.

    This proposal allows the First-to-Invent to almost automatically become First-Inventor-to-File (FITF).

    Note: One major issue in the implementation of this proposal is … maintaining all the current foreign priority options [under Paris Convention 4.C.(4) & foreign laws] with a string of 100’s of updated PPA’s extending back possibly many years. Variations of current PPA “abandonment” approaches may resolve this.

  13. Senator Reid just announced that the S. 23 bill be taken up for debate at 3:30 PM Eastern.

  14. Dale-

    I agree that the publication rule has been a disaster. That is what has allowed the public (i.e., large corporations) to ignore the enormously long pendency. If there were submarine issues those large corporations would demand (and receive) better.

    I don’t agree that the resources issue is a red herring. We do agree that the problem is Congress taking money away from the PTO, but Kappos is trying to do whatever he can to affect change within his power. He has been powerless to stop Congress so he needs to squeeze whatever additional output he can out of what he already has. Not saying it should be that way, but I don’t think it is a red herring, rather a sad reality.

    I just don’t see a problem with first inventor to file. There is still no race to the patent office and the horribles that most point to would happen because of the exceptions in 102(b). It would also undeniably give inventors incentive to do what we know they should, which is file sooner rather than later.

    Some have complained that first to invent would be harder to understand, but that isn’t true at all. First to file is very simple and easy. It is harder to understand than the misconceptions about first to invent, but we all know that first to invent isn’t really first to invent. It is first to invent if you were diligent and if you have suitable evidence. Independent inventors rarely, if ever, are diligent and rarely if ever have evidence to demonstrate conception. So first to file doesn’t seem problematic, but the changes associated with first to file do deserve scrutiny, in my humble opinion.

    Cheers.

    -Gene

  15. Today I have sent the following to my Senators, Feinstein and Boxer. It doesnt try to address every issue or every arguement. I have been advised to just hit the big points. My two points are FTF and opposition. About the arguements above, just ask how can I now get behind a cited reference and how will it work in the proposed law. That tells the whole story on that issue.
    Here is what I sent:
    I am writing about the so-called patent reform bill.
    I have been a patent attorney for over 45 years and I have seen the patent system go through pendulum changes of pro and anti patent.
    First I want to strongly oppose the first to file change from first to invent. First to invent is the jewel in the crown of our patent system. It rewards the basic merit of the patent system, which is, simply, the date of invention should govern the right to a patent.
    I have heard of no argument for changing. Some have talked about “harmonization”. That is a red herring, there is no disharmony. Some have talked about the cost of interferences. But interference is an extremely rare proceeding.
    Overall there is no argument that can overbalance that easy to understand principle that the date of invention should be the date from which to measure the right to a patent.
    As you know the date of invention is how patentability is measured vs prior art that is cited against patentability; that is the main issue here. First to invent was written into the 1957 law as well as some amendments. That law has served to make our patent system the benchmark everywhere. Yes, other countries have made first to file their law. But since when do we follow; and especially do we give up the true merit of a system to follow countries who merely adopt an easy bureaucratic approach.
    Another objectionable feature is the proposed opposition procedure. It clearly tilts in favor of those who can afford to track issuing patents and attack anything they don’t like, which they can afford to do to deprive other parties of development of a patent position.. There is no defined level of interest to qualify for provoking an opposition. By way of example, the right to a Declaratory Judgment action in court requires a defined level of interest. The patent system has problems, but the proposed law is a tilt in favor of the powerful and rich over the more modestly situated inventors. We your constituents have great suspicion of a bill named “reform” we see it as a cynical disguise for tilting a balance law in favor of a special interest. I am afraid that is the case here.

  16. Lawrence-

    Amen to your letter, at least as far as I am concerned. During the introductory presentation of the newly named America Invents Act a little while ago, they were proposing a new fee-setting authority for the PTO, which is OK by me as long as we have a very trustworthy and efficient management team there, which seems to be the case right now, but the future might be worth considering. They didn’t mention a word about ending fee diversion, and it is somewhat interesting that Senator Coburn retracted his amendment in that regard before it left the Judiciary Committee. The only reason I can figure is that Senator Coburn didn’t want his anti fee diversion amendment to get diluted before it made it to the Senate floor. It sounds like things will happen pretty quickly this time in the Senate, but it might get delayed by the push in the Senate to get a temporary extension of the Federal budget passed that needs to happen this week or the government might run out of funds shortly. They will need to address the budget more substantively two weeks after that, as a continuing resolution I would imagine?

    Thanks for contacting your Senators so eloquently, and I certainly hope that they will listen to the voice of experienced reason. I believe Senator Feinstein has been involved in these issues a bit in the past, so she probably has some sort of a handle on some of the issues that you raise.

    Best regards,
    Stan~

  17. with regards to printed publication, they should keep the meaning of ‘printed publication’ strictly within the scope of patents, text books and well-known academic journals. The patent office would have no reason to exist if something posted on Facebook or Youtube can be used to invalidate a patent.

  18. Did anyone notice that section 15 will quietly do away with the best mode requirement?

  19. Hi Mark-

    Not exactly, as it only prevents the invalidation of a patent or application for failing to clearly identify the Best Mode. Probably only arises around litigation I would suppose, but why in the world would I ever want to be there? Paraphrased from what a very brilliant patent agent told me once.

    Stan~

  20. Consider this interesting beer invention … (not my invention).
    No more beer lines at events.
    http://ht.cdn.turner.com/cnn/big/tech/2011/02/24/simon.no.more.beer.line.cnn.ipad.qtref.mov

    During bootstrapping, there are a multitude of ways that a third party might inadvertently be exposed to an invention … and then, without the inventor’s knowledge or approval, disclose the idea … for example via “text” (blog, twitter, social media, etc.).

    In many cases, the inventor may have extreme difficulty proving “derivation” after viral-distribution to largely unknown third parties.

    As I understand/read the proposed 102b (1), if this happens, before the inventor has bootstrapped to where a solid patent application was filed, that “text” could prevent a patent; or if that “text” is discovered later, invalidate the issued patent. [Today, in foreign countries it’s already ==> no patent for this scenario.]

    Under current U.S. patent law … the inventor can still get the patent … because the U.S. one year bootstrapping grace period tolerates the thousands of different bootstrapping activities, where disclosure may occur.

  21. Mark-

    Yes, best mode would go away. More harmonization. Frankly I don’t know that it matters. The world has a de facto best mode requirement because virtually everyone wants a US patent so they need to satisfy it as of filing anyway. So to harmonize we will change worldwide drafting procedures already in place. That is government in action for you!

    -Gene

  22. Here is a similar story

    In March the U.S. Senate is expected to begin debate on Senate Bill 23, the Patent Reform Act of 2011. This bill, which was recently approved by the Senate Judiciary Committee by a 15-0 vote, represents a bipartisan effort over several years to balance the interests of all stakeholders, large and small, in an effort to reform and modernize the U.S. patent system.

  23. Frankly I don’t know that it matters. The world has a de facto best mode requirement because virtually everyone wants a US patent so they need to satisfy it as of filing anyway.

    So Gene, you are saying it does matter?

    I can tell you from personal experience as both an inventor working for a major corporation and as a patent agent counseling clients, the only reason why inventors disclose the best mode is because their patents would be invalid without it. Once best mode is gone, inventors will withhold best mode. The US patent system will then become that much weaker.

  24. Gene, there is no such thing as “first inventor to file.” Only one person or group can be an inventor, the other people are just clever engineers. For instance, if I recreated calculus without any apparent training in calculus, that would not make me the discover of calculus, it would just make me clever at math.

    As for small inventors, a number of start-up companies I know have had to put off patent and development efforts because of lack of funding. These groups would not receive patents for their inventions when a bigger company outspent them creating a picket fence of patents around their fundamental invention.

  25. Dale-

    We are going to have to agree to disagree on first inventor to file… at least if I can’t convince you otherwise.

    The patent laws make a distinction between those who contribute conception and those who do not. Currently under 102(a) one is called an “inventor” even though they may not be the first to invent. This is further confirmed by 102(f). 102(f) would render 102(a) superfluous if there wasn’t such a distinction. 102(f) is concerned with the situation where someone is not an inventor at all (i.e., no conception, just stealing involved). 102(a) on the other hand deals with multiple people who have conceived.

    That being the case, the first inventor to file part of S. 23 is not all that different than the system we have now. You still have to be an inventor (i.e., conception) but you would have to be the first such conceiver to file. What is quite different is the grace period change, which would at least half the grace period currently available under 102(b).

    -Gene

  26. Mark-

    Let’s go down that path about the absence of a best mode making the US patent system weaker. I don’t know about that.

    It is certainly fair to say that the disclosures will not be as robust, and we can talk about whether that is forwarding the Constitutional purpose and whether the founders would have liked that and whether that is desirous from an advancement/scientific level. But I don’t know that I agree it would make the patent system weaker. I also think it will create more, not less, licensing opportunities and will dramatically increase the trade secret value associated with an innovation. I haven’t worked through all the thought process, but why wouldn’t that be better in the global marketplace for innovators? It would be harder for the copyists to knock them off, or at least it seems plausible that would be the case.

    What are you thinking? I know from experience when you raise something like this you have something in mind. What do you think I am missing?

    -Gene

  27. Dale:

    You can have the earliest known inventor, the most recent known inventor, etc. Newton may be the earliest known inventor of calculus, but that doesn’t make him the Inventor of calculus (in some absolute, exclusive sense). We don’t have absolute knowledge of every intelligent being that ever existed such that we can definitively say that none have invented X before.

    If you, without any exposure to calculus at all, independently work out its axioms, lemmas, and essential results, you have performed the same essential tasks as Newton. So, if Newton invented calculus, you have also invented calculus. Another may have performed these essential tasks earlier than Newton and Leibniz, but they’re actions are unknown to us. You are the most recent known inventor, Newton is the earliest inventor known.

    The earliest known inventor is given priority rights in getting a patent. A person is rewarded for having actively and vigorously pursued the improvement of mankind’s condition. A first inventor to file system may occasionally assign a patent to a later inventor but, if the system is implemented well, Gene points out that “invention stealing” and biases against independent and small inventors (among other negative repercussions) can largely be avoided. Additionally, the current hefty investment of time and energy in interference cases could be mitigated.

  28. Looks as if the Senate will be debating the patent bill in a few minutes, and maybe have a vote this afternoon.
    http://www.c-span.org/Live-Video/C-SPAN2/

  29. Gene,

    102(a) does not use the word inventor. It just talks about the invention. The only section where “inventor” is used is 102(g). Since it states “another inventor” it appears to support you point. However, I was not talking about the legal definition, I was talking about logic. Many areas of the law are poorly drafted or illogical. Logically and morally, there is only one inventor.

  30. Gene-

    It looks like I lost the debate regarding first to file, at least according to Senator Jon Kyl of Arizona. He quoted several of your posts in that regard on the Senate floor about a half hour ago. I was amazed…

    Stan~

  31. Stan,

    Thank you for letting us know about Senator Jon Kyl’s enumeration of the above article on the senate floor. I, for one, am pleased to see that the Senator is taking this issue seriously, and it goes without saying that I am ecstatic and so proud that Senator Kyl reads IPWatchdog and has given Gene’s commentary recognition today while discussing the importance of Patent Reform.

    Although some may not agree with Gene’s assessment on this issue, there are many, many more that do. And that is clearly evident by the fact that Senator Kyl cited Gene’s commentary in order to make his point on the Senate floor.

    Thank you for reading IPWatchdog and thank you for your regular contributions to our blog discussions.

    -Renee

  32. Renee-

    I was very surprised when I heard Senator Kyl quote a few of Gene’s comments from just a day or two ago. His testimony should be archived I would imagine. Currently they just tabled (killed) the Vitter amendment. The Coburn Amendment to end fee diversion seems to up next.
    http://www.c-span.org/Live-Video/C-SPAN2/

    Best regards,
    Stan~

  33. As for best mode, keep in mind that we also have an “enablement” requirement. So, the issue really is, could there be a really good way to practice the invention which would not be disclosed, but still the invention could be enabled. In most technologies the difference is of little consequence, for example a mechanical device. But in the chemical, especially biochemical and pharmaceutical fields, the best mode can be for example a specific combination of ingredient proportions that works really good, and is withheld, or a way of making the pharmaceutical that is way better than the more ordinary way, and it is withheld.
    Frankly, I think best mode is a fair element in the system, but I would not condemn its elimination.
    As for who is an “inventor” that very spiritual. I think it is more useful for the debate to accept that there are two positions. One is that there can only be a single inventor, that is the person who invents it first. The second view is that there could be more than one inventor, each of whom invents independently. But for the present first to file vs first to invent debate, these distinctions miss the point. The point is, under first to invent, we can swear behind a reference, which is done when the invention was made before the date of the reference subject to the one year limitation of 102(b), when applicable. In first to file, any reference dated before the filing date can be cited even if the inventor made the invention before that date (there are limited exceptions for the inventor’s own disclosures.).

  34. Stan-

    Thanks for the nod. I am rather excited. Moments like this make the hard work seem all worthwhile.

    Cheers.

    -Gene

  35. [...] You can read Gene’s insightful commentary at IPWatchdog.com. [...]

  36. Gene,
    Your agrument that we already have a de facto first-to-file system because intereferences are so rare seems incomplete. Changing to first-to-file would not only eliminate interferences, but also other procedures, such as “swearing behind” a reference via a Rule 1.131 affidavit. I would expect that Rule 1.131 affidavits are much more commonly used than interferences, because an interference requires an application with identical or nearly identical claims as another application or a patent, whereas a rule 1.131 affidavit can be used to overcome even a reference that is applied under a 103 rejection. Thus, I don’t think we truly have a de facto first-to-file system.

  37. [...] by Senator Jon Kyl (R-AZ) on the floor of the United States Senate. The article is titled Senate to Vote on Patent Reform, First to File Fight Looms and addresses the potential change from a first to invent system (which we have currently) to a [...]

  38. Robert-

    Thanks for the interesting take on the matter that I hadn’t heard of before because I am not an attorney. I still can’t find any good reasons to support a FTF system , but I can think of several reasons why it might possibly cause problems for small entities. The Senate is taking up S. 23 again in a few minutes, with apparently the Coburn amendment to end fee diverson. There is another very important amendment coming up today, which I won’t mention here.
    http://www.c-span.org/Live-Video/C-SPAN2/

    Stan~

  39. [...] Of course I did.  Gene is one of the best sources of intellectual property news out there.  His article that published on Sunday was about the new patent reform bill that is currently before the [...]

  40. Alan,

    I disagree. The discoverer (inventor) of calculus is the first one to create calculus. Only the first person adds to the store of human knowledge. The definition of inventor or discoverer does not include re-discovering that which is already known. Even if the knowledge was lost for some period of time, this person is still not the inventor. They may be brilliant but they are not the inventor. You cannot invent something that already exists, that is oxymoronic.

    The definition of an inventor is a person who creates something new. The “creates” implies that it is useful and new requires it be novel. You cannot create something new that already exists – it is not new. This is not Alice in Wonderland. Words have meanings.

  41. [...] actually challenging what I wrote recently when I explained that the United States already has a de facto first to file system.  It is almost hard to believe that anyone who has looked at the data and seriously considered the [...]

  42. In my practice, I estimate that we “swear behind” a reference in about 25% of the applications. I regard that as a high occurrence. In practice examiners try to cite references that are more than a year earlier than the application filing date. When they do that they may have not cited an even more relevant reference in order to avoid a 131 affidavit (that’s what we mean by swearing behind”), so the result is perhaps getting the patent because we argue the reference away, or amend to avoid it. But when they do cite a reference that we “swear behind”, the examiner will do another search to get earlier art. It is extremely rare that when we swear behind a key reference we then get a Notice of Allowance. By the way, if you do swear behind a reference try not to do any claim amendments, because if you do amend claims you will get new art and a final rejection, requiring an RCE to make a substantive response to the new art.
    Anyway as for FTI the name does mislead some who are not patent attorneys since we don’t really mean “first to invent” we really mean “Invention earlier than a cited reference” since as Mr. Quinn and others point out it isn’t or shouldn’t be a debate about interferences, it really is about invention date being earlier than a cited reference.

  43. Lawrence-

    Excellent point!

    Anyone have thoughts, comments about how you far in terms of getting claims allowed when you have to swear behind?

    -Gene

  44. Dale,

    Words do, indeed, have meanings. The word “new”, for instance. If by “new” you mean “uniquely distinct to all from anything in the past” and by “inventor” you mean “one who creates something new” then there can only be one inventor. However we, as humans, are not omniscient and can’t actually know for certain if something has never existed in essentially the same form in the past. So you find that this stance has no practical utility since inventorship can never actually be determined, even in principle.

    On the other hand you can define “new”, in this context, to mean “uniquely distinct to the creator from anything in the past” then we have something with practical utility, inventorship can at least be determined in principle. A person can swear that they came up with this independently and have found no other record of it. We can do investigations of this person’s life and activities, etc.

    Among inventors, we select the earliest one known, and grant that person the rights and privileges associated with inventorship. This encourages individuals to pursue their ideas quickly and efficiently, and ultimately benefits society as a result.