Challenging Patent Reform First-to-File Provision

By Gene Quinn
April 8, 2009

I recently received an e-mail from Ron Katznelson, who is the Founder and President of Bi-Level Technologies in Encinitas, CA.  Dr. Katznelson is a named inventor in more than 25 U.S. patents and his research and development interests include optimal signal design, digital RF signal processing, digital television, signal representation & sampling theory, intellectual property management and patent law.  Over the past several years Dr. Katznelson has been heavily engaged in the patent reform debate, both with respect to reforms the Patent Office has attempted to implement and with respect to reforms that Congress has been considering.  Dr. Katznelson is now attempting to gain support within the inventor and start-up community to request Congress to reconsider the First-to-File provisions that are currently within the current patent reform legislation, which is now pending and widely believed to be a done deal. 

Dr. Katznelson believes, as many do, that the first-to-file provisions are not helpful to the independent inventor and start-up communities, and instead favor larger corporations.  I have been on record for years saying that Congress would never pass a first-to-file law because it would substantially impair the ability of individuals, start-ups and research and development based companies to compete against extremely well-funded and established corporations.  If the US patent system becomes a race to the Patent Office this will favor those who are capitalized and be an impediment to those small businesses and start-ups that are the life-blood of the US economy. 

Dr. Katznelson is attempting to gain signatures on a letter that he will present to Congress in the coming days.  The companies who have thus far signed the letter are largely unknown because they are in their early stages of development Any company who wishes to join the list by the close of business on Thursday, April 9, 2009, are welcome to do so by contacting him directly at rkatznelson@roadrunner.com. Send the full legal name of the company and city.  For those who are not familiar with Dr. Katznelson, I can tell you that he is widely respected and can be taken seriously, so if you are inclined to agree with his position I would not hesitate to contact him and join in his efforts.

I would encourage everyone to read the full letter, but what appears below is the Detailed Concerns section of the letter explaining why it is believed that the First-to-File provisions are problematic (footnotes have been omitted).

The First-To-File (FTF) provisions of S. 515 do not merely amend § 102(g) for resolving interference issues in favor of the first to file. Rather, they radically change most subsections of § 102 and § 103 to redefine what prior art means, thereby undermining basic priority property rights of inventors. These proposed amendments would have far-reaching adverse consequences, some of which we enumerate below.

(1) We believe that the FTF proposals in S. 515 impermissibly deviate from the Patent Clause of the U.S. Constitution, as this clause had been consistently understood over two hundred years to secure the rights of first inventors to their inventions.

(2) We are concerned about the chilling effects FTF would have on startup companies’ ability to forge strategic partnerships and obtain related investments during the most critical phase of their development. Startup inventors would find it hard to disclose their inventions to potential strategic partners/investors, because the proposed statute has much lower threshold triggers for loss of patent rights of those who actually conceive of an invention first. Small entities that cannot “throw money” at accelerating their R&D efforts would be disadvantaged compared to larger entities in the race to the patent office that the proposed statute creates.

(3) The proposed “derivation” proceedings contemplated by the bill to address misappropriation of inventions by the first filer add complexity and place untenable evidence discovery burdens on smaller companies. This is because the primary evidence of “derivation” or misappropriation will be in the hands of the adversary whose patent priority is being questioned. In contrast, under current law, the primary evidence for determining priority is in the possession of the parties.

(4) Proponents of FTF argue that its priority certainty promotes judicial efficiency, but this purported certainty is highly questionable. The priority issues will simply change from those of conception, reduction to practice, etc. under current law, to issues of claim support under § 112 in provisional application strings, CIPs, and specification support in the eventual application for after-added claims. Moreover, Interference proceedings would be replaced by “derivation” proceedings because first inventors would not just cede priority to first filers without attempting to discover possible first filer derivation from their prior invention.

(5) In a recent study2 of over 1,000 applications, it was found that at least 13% of priority applications would lose more than one year of priority rights under FTF and that at least 4% would lose more than two years of priority rights.3 Although a minority, these are probably the most valuable patents, requiring longer experimentation and development of preferred modes of practicing the inventions. These statistics provide only lower bounds, as data on actual earlier invention dates were not available. Some companies have explained that they already file patent applications as if FTF were in place, because of their international practices. They opine that enacting FTF would not make much difference in their operations. However, examination of patent disputes suggests that in many cases this argument is shortsighted, overlooking the role of U.S. patents in international patent portfolios, in which the U.S. patent is often the central pillar. When a U.S. patent is part of a patent family, validity of the foreign counterpart patents in the family is generally not litigated. Many disputes settle across the full international patent family, based on analysis of only the U.S. patent, because that is where the dominant economic value lies. Thus, we believe that since FTI was effectively the controlling criterion, patentees have had very little actual experience in evaluating the full effects of FTF on international patent portfolios.

(6) U.S. R&D jobs would likely be lost following enactment of FTF. The loss of patent priority rights would selectively harm only companies that employ U.S.-based R&D teams, as current law provides the advantage of priority rights only to domestic activities prior to filing. In contrast, foreign competitors having foreign-based inventors would lose nothing. To the extent that multinational firms have incentives to keep their R&D activity in the U.S. due to the current domestic priority advantages that make their inventions more valuable, the proposed FTF law would remove all such incentives.

(7) Over more than a century, the American First-To-Invent (FTI) system produced a legal balance among the various factors and incentives of the patent law, including written description and enablement requirements and the patentee’s entitlement to priority. The expertise in the American innovation process for handling disclosure, investment, collaboration and technology diffusion was developed and perfected under the legal procedures and protections afforded by the FTI regime. FTF would dramatically upset this legal balance and change the costs, the risks, the internal engineering procedures and the processes of IP development. It would “throw out the window” our workforce’s expertise of doing its innovation business, requiring a lengthy learning curve based on development of new case law and new strategies over many years to come. If enacted, FTF will create two legal frameworks, encumbering Americans with confusion over priority rights of new patents and the more valuable priority rights of old patents issued prior to FTF’s effective date.

(8) There is evidence that FTF would likely create unintended collateral damage, an unprecedented flood of hastily submitted patent applications to the USPTO. In some cases, companies say they would have to double the number of applications they file to ensure early priority dates.4 Other evidence shows that many of the applications filed under the “FTF gun” have lower quality, with a majority being ultimately abandoned.5 One important item that FTF proponents neglected to consider is that the USPTO does not use the pre-examination application disposal mechanisms used by other national patent offices to encourage voluntary abandonment. Those mechanisms, including issuing Search Reports and Deferred Examination, are crucial to prevent flooding the examiners in FTF systems6 but are not included in the “harmonized” provisions of this legislation. U.S. FTF would increase the backlog at the USPTO, reduce patent quality and would generate more fodder for “trolls”.

(9) Because of the increase in applications filed, FTF would also saddle U.S. innovators with higher product development costs because they would have to invest R&D resources to develop non-infringing solutions “designing-around” patents that would have never been applied for, let alone issued, under the current First-To-Invent system.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments.

  1. patent leather April 8, 2009 1:03 pm

    Inventors commonly ask me whether they can disclose their invention once their patent is filed, and I typically answer “No!” With our first to invent system, an unscrupulous (and better capitalized) party could file for the invention second and try to provoke an interference. Sure they would have to prove it, but such a proceeding will be very costly to the original inventor, potentially delay his patent issuance, and also delay the rollout of his invention. I typically advise clients to wait a period of time, from a few months (weakest) to 1.5 years when the application is published (best) before coming out with their invention.

    It would be a better world in my opinion when once an inventor files his patent application, he is then free to disclose his invention to the world and not fear that someone could get in front of him. Imagine also the horror of having a successful patented invention and then the surprise of a later provoked an interference by an unknown party. This uncertainty should come to an end.

    Consider also the hurdles that a smaller inventor has to surpass in order to take advantage of our first to invent system. If he is second to file, he would have to provoke a costly interference, something that a smaller inventor probably couldn’t afford. If the second to file has to show diligence, he’s probably lost the battle already as the diligence standard is very hard to meet. If the second to file has an actual reduction to practice prior to the first to file, then he probably had enough data to have a provisional filed when he reduced.

    I understand the disadvantages of the first to file system, but I”ve seen small inventors get burned by first to invent. It would be nice if an inventor could file his patent on Monday, and start marketing his invention on Tuesday feeling perfectly safe.

  2. Michael F. Martin April 8, 2009 1:05 pm

    In my experience, startups are not any slower at getting a good disclosure and claims on file with the PTO. In fact, if anything I believe startups are far more nimble in this regard than the larger corporations, which often have an established process for getting disclosures on file that won’t be interrupted even when something high priority comes along that probably should get to cut in line. Startups understand that IP can end up being crucial leverage with large companies later, and can devote more attention and resources accordingly.

    If you think derivation proceedings are a burden, then you should be in favor of first-to-file. Interferences, of which derivation disputes are only a small percentage, are even more expensive.

    Sorry, but I just don’t agree with your analysis.

  3. EG April 8, 2009 3:58 pm

    Gene,

    I respect Ron K. quite a bit, but the argument for first-to-invent has a real problem, namely the cost of patent interferences which are required for the determing who was the first to invent. Davids of Innovation (especially individuals) can’t afford the cost of an interference which close to that of a mini-lawsuit and sometimes like that of a major lawsuit. Only the Goliaths of Industry can afford (reluctantly) patent intereferences.

    My dad (still mentally alert at 90, God Bless) was an interference expert (probably put me and my brothers through school with what he made from that expertise). By his estimate, he did something like 400 of these “monsters.” Even so, dad argued fairly early in his private law career (after 11 years as a patent exmainer) that the U.S. should do away with Interferences, and with it a first-to-invent system (other derivation). The reason: the high cost of interferences, the arcane rules for determining first-to-invent (and dad new all the rules and tricks backwards and forwards), and most significantly that only about 20% of the time was the second-to-file determined to be the first-to-invent (which dad felt was a pretty low proportion for the high price of interferences).

    Dad was also one who rooted for the little guy. He even took an interference on a contingency fee basis for an individual (on dialysis) who was in a fight with a former employer over inventorship/ownership. Dad finally won the interference (often used to resolve such inventorship/ownership disputes) but not before his client died before the patent finally issued. As my dad would call it, a “pyhrric victory.” Keeping first-to-invent to supposedly protect the Davids of Innovation is a pipedream today. What’s worrisome about S. 515/H.R. 1260 is post-grant opposition; the PTO can’t handle it, nor can the Davids of Innovation survive a relentlessly pursued post-grant opposition by the Goliaths of Industry. Not saying this is fair, but it’s the reality of where we are now.

  4. Gene Quinn April 8, 2009 7:20 pm

    Guys-

    I understand what you are saying about the cost of interferences, but there is a real worry by many that moving to a first to file system would create more work, not less work, for the Patent Office. In a first to file world there are going to be a great many people who file application after application in order to win the race to the Patent Office. Even assuming the increase in applications would not overwhelm the Patent Office because they would be provisional applications or turned into CIPs with the original being abandoned, what the filing of many interim applications will create is the need to have more proceedings to determine whether a particular application sufficiently disclosed the invention to satisfy 112. So rather than an isolated number of interference proceedings there is a real possibility that there will be a flood of new priority battles that will approximate interferences. From what I hear there are some in the PTO that are worried about just this.

    In terms of telling an inventor they cannot market an invention after a patent application is filed for fear of an interference, I don’t do that and I don’t see that as a real risk. Has it happened, I am sure it has, but with there being so few interferences to begin with is it a real risk? I personally do not believe that to be the case. The bigger risk is filing an application, getting a patent pending and then waiting for 3, 4, 5 or more years for it to issue. During the interim an unscrupulous person or company could copy with relative impunity until the patent issues. Given the low issuance rate and the fact that a reasonable royalty post publication is all that is allowed, that strikes me as a bigger concern.

    I am not in favor of anything that could increase the workload of the PTO, and I think first-to-file may do just that. Post grant review certainly will do that. If the workload is increased the PTO will just put off more work on applicants. Thanks to the Federal Circuit there is no reason the PTO couldn’t require every applicant to submit an examination support document. More work for the PTO means more work for applicants, which means higher costs, all to get a patent only 42% of the time and after many years of waiting. I would rather see efforts made to help the PTO before taking on first to file.

    -Gene

  5. Stan E. Delo April 8, 2009 10:35 pm

    Hello Gene,
    A very interesting analysis of the issues, some of which which patentleather and EG have brought up in their comments. I respect both of these gentlemen greatly, for their obvious expertise and knowledge, but would very respectfully disagree in a few matters. The argument about eliminating the whole interference process and it’s costs are perhaps overstated in my opinion, being somewhat reminiscent of the reasons to change US patent law that is being used by large entities, wherein they decry all the ruinous patent litigation that is going on against them. In point of fact, interferences, just like attempted litigation for patent infringement only amounts to about 2% or less of all granted patents, as I seem to recall. In other words, they are both vanishingly small in their importance in the bigger scheme of things. What IS Very important to me as an independent inventor trying to get things off the ground, is that I would be forced to file at least double the amount of patent applications in order to beat the big boys to the patent office if First to File is made the law of the land, at very great expense to my business that is still just getting started right about now. In contrast to perhaps losing interference proceedings, the current bill will allow nearly anyone to file very inexpensive Post grant challenges for How Long? This latter would be disastrous for me, and could very well be a major issue for nearly half of my filed patent applications, and not a measly 2% interference cost that Might happen with the First to Invent system, if I was careless about not doing my homework about what I was attempting to claim. Not gonna happen here, and if it does to some inventors, so be it because they were being foolish with their IP. First to File will probably completely bury the USPTO in applications as Gene suggests, making US patent pendency into a very bad joke, which would not seem funny to me at all.

    Best regards,
    Stan E. Delo
    Port Townsend, WA
    stand@olypen.com

  6. EG April 9, 2009 6:19 am

    Stan,

    Very good points, and no problem with disagreeing with what I said. I don’t know if my interference cost argument is overstated, but one thing I do know is that any individual inventor who gets embroiled in an interference with a large or even modest sized corporation is going to find the cost (and time expended) daunting. The case I referred to above that my dad took as a contingency (because he knew the individual would never be able to afford to do the interference on a straight billable hour basis) is Sheffner v. Gallo (this was the only case I ever saw my dad argue before the CCPA). The time my dad spent on it was signifcant, including the appeal to the CCPA, which, but for my dad taking this as a contingency, the individual involved couldn’t have afforded. I certainly wouldn’t analogize my argument to what’s happening with the oxymoronic so-called “patent law reform.”

    What really concerns me about the so-called “patent law reform” (beside the fact that it isn’t “true” reform as it doesn’t address at all the front end of the examining process) is post-grant oppposition. I actually been involved in a European opposition adn they’re not cheap or time efficient. How Congress thinks the PTO can handle all the oppositions that will be filed, primarily by the Goliaths of Industry who can grind the Davids of Innovation into the ground by sheer force escapes me.

  7. Denis O'Brien April 9, 2009 11:07 am

    First to Invent is the Sarah Palin of the US Patent System — first, it’s an embarrassment to the USA, and second it’s supported by people who just cannot get it. Or worse, what a lot of these FTI supporters want to do is sit on an undisclosed invention for which no filing was made, and then try and extort royalties from the diligent inventor who reduced to practice, filed the application, and went to market. FTI is like mother’s milk to the trolls.

    What possible evidence is there that the PTO would be deluged by applications in a FTF system??? Look around, boys, do you see every other patent office in the world deluged? I don’t. I see our foreign filings moving along as well as or faster than our US filings.

    And what evidence is there that small inventors are disadvantaged in FTF systems? The problem the small inventors have — and I know because I am one and I am as guilty as the next — is that they won’t get off their butts and file a provisional. Those who snooze should, by all rights, lose. This is the business world, baby; it’s not some fairy land where a bright idea, without more, automatically means you are entitled to a monopoly.

    The problem I have (and, I think, most small inventors have) with current proposals for FTF is that the proposals do not secure sufficiently strong prior use rights. Person “A” who invents first but files second — or doesn’t file at all — should not be cut off from using his invention because “B” files first. “A”, by not timely filing, should should be cut-off from acquiring the monopoly but should still be entitled to continue practicing the invention at the same level as when “B” filed. Such prior use rights should not be assignable, but should remain personal to the inventor . Of course, if all “A” has at the time “B” files is an idea that is not in the market or even reduced to practice, then no prior use rights attach, because there was no use. Sitting on an idea is not using it.

    This means that “interference” proceedings would move out of the PTO and into the courts as a defense to infringement. The defense would not invalidate the asserted patent, it would just obviate its use against a first inventor defendant. A provisional should always be admissible as evidence to support prior use rights even if a non-provisional application is never filed. Even better would be a return to the Disclosure Document as a means to secure an inventor’s prior rights to continue using his invention himself.

  8. Gene Quinn April 9, 2009 11:09 am

    I also respect EG and patentleather, and appreciate their input, as well as your input Stan.

    My fear is that there was so much debate over damages that the big ticket items that could cause more work for the PTO and further damages the process were hardly considered. Post-grant review is a nightmare! I know interferences are expensive, and there needs to be a better way, but this running through first to file without discussing what that will do to the number of applications and workload at the PTO is sad.

  9. Michael F. Martin April 9, 2009 12:51 pm

    Gene,

    Could you explain why the filing of applications in smaller chunks more often would create more work for the PTO? Putting aside interferences (which you appear to conced do not favor small entities), this seems to be the main source of disagreement. I don’t see that it follows at all that smaller applications more often would be more burdensome on the PTO than fat applications once/year — especially since figuring out what is prior art and what isn’t reduces in many instances in a first-to-file world to looking at a date. And that’s putting aside the savings of time in coordinating search activities with foreign patent offices — a problem that I don’t see addressed in this analysis at all.

    Thanks for your any reply.

  10. Gene Quinn April 9, 2009 1:41 pm

    Michael-

    I am not convinced that the filing of more applications would in and of itself create more work for the PTO. I think where the additional work will come is in weeding through who actually disclosed enough to have an application that satisfies 112. Right now the examiners largely only look at the claims, not the specification, but when you have a race to the Patent Office I think examiners are going to have to read the specification to see whether the earlier filed application was complete enough to be deserving of a filing date. If examiners do not do that then they will have to kick out the applications relating to the same invention like they do not for interferences. Then the question will be whether the earlier filed application satisfied 112, and if it did not then it would not be properly entitled to that filing date, making the second application filed really the first application to get a good filing date. So we would have many more disputes, rather than fewer disputes.

    As it stands now we all know that the overwhelming majority of provisional applications are crap and do not support a filing date. With a race to the Patent Office I fear that many more applications will be crap and not support filing dates, which could really bog down the system.

    I also think Katznelson’s 5th point above is particularly important. Everyone says that First to File works everywhere else, but can they really say that? The US is the dominant player and everyone adjusts their patent portfolio to our rules, so do we really know what a US FTF would cause? I don’t think so. This is sort of like saying that only the US has a best mode requirement and no other country has a best mode requirement. In fact, the truth is that the whole world has a best mode requirement because that is what the US requires and if you want a US patent you need to disclose it, thus there is a de facto best mode requirement.

    I just worry that we don’t know what we are getting into here. This is obviously the first step toward a world-wide patent, or at least getting a patent in one country and then that leading to a registration in other countries based on the first issued patent.

    -Gene

  11. Michael F. Martin April 9, 2009 2:15 pm

    Gene,

    Maybe I’m misunderstanding you on this 112 point, but it sounds like you’re saying that moving to first-to-file would require Examiners to do something that they should have been doing all along — e.g., confirming that provisional applications provide adequate support for later-filed non-provisionsals. If that’s what you’re arguing then I would say that *even if* the move to first-to-file requires additional work (and I’m still not convinced for the reasons I gave above; determining the effective date of prior art references is a time-consuming and uncertain process for many Examiners), then we should embrace the move because it would improve the average quality of patents — an improvement that, by definition, makes patents more valuable to exactly those people who comply with the rules. Are those people more likely to be large corporations than small entities? For a host of reasons, including the relative importance of IP rights in negotiating with other companies, I don’t think so.

    Also, Katnelson’s point 5 doesn’t really address the harmonization issue. The point is that a considerable amount of time is wasted dealing with the U.S.’s idiosyncratic rule of priority. If U.S. Examiners have a hard time figuring out the effective prior art date under 102, what hope to foreign examiners have? I don’t see this point addressed, and it is a major source of disputes during prosecution. Besides the added administrative costs for dealing with the lack of parity, the U.S. has consistently given up bargaining chips in IP treaty negotiations in order to preserve its rule of priority. That’s silly for all of the reasons that I’ve argued above.

    For what it’s worth, I’ve spent a considerable amount of time researching the history of our rule of priority, and have an article on it forthcoming in the Franklin Pierce Law Review. You can find a draft of the article on SSRN here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1123572

    I love the first-to-invent rule for what it says about our culture in the U.S., but it’s raison d’etre has expired and the rule should with it. Let it be more honored it in the breach.

  12. Gene Quinn April 9, 2009 2:27 pm

    Michael-

    I agree that examiners should have been reviewing the specification all along, but the reality is that they don’t. It is wonderful to think that they should, and want them to, but if we make more work for them the reality is that the backlog will grow and the Patent Office will become completely irrelevant. Having the highest quality patents without any patents issuing in a technologically relevant time frame is not helpful. At some point someone, an examiner or the Board, is going to have to decide on who to give the patent to when there are competing applications and one doesn’t have a sufficient disclosure to make the claims. The reality is that this will happen all the time. My disclosure may satisfy 112 for a handful of claims, and not for others, so that would leave us with the same interference type analysis, only magnified by the increased number of applications.

    I agree that the US should not give up bargaining chips. We should not be so desperate to enter into treaties that require us to adopt the bad ideas of other countries. By default the US establishes patent law rules and those in the State Department, Department of Commerce and White House need to realize that. For many administrations we have been trying to become more like others, regardless of the fact that there is no need to and they should become more like us. We have the dominant patent system, the dominant market and the most innovators, so why would we ever consider becoming like other countries?

    -Gene

  13. Michael F. Martin April 9, 2009 3:14 pm

    “We have the dominant patent system, the dominant market and the most innovators, so why would we ever consider becoming like other countries? ”

    Because we have more to lose than they do by not.

  14. Stan E. Delo April 9, 2009 10:09 pm

    Hi Gene and Michael…. This discussion has certainly spun off to cover a lot of territory! Perhaps it is not too late to consider Gene’s point, wherein the blizzard of applications submitted to the USPTO might be a sort of faux storm, in that most of them will lack the substance/substantive material to make them really relevant in the near or distant future. If that is indeed true, the efforts and expenses of the filers will be largely wasted, and the workload of the USPTO will become astronomical, For a Few Years, until they can get adjusted to the new environment that a First to File system would impose upon American inventors. I don’t happen to buy that song and dance though, as the penalties that are inherent with a First to File system seem to obviate the expediency that it would represent as regards Harmonizing the US patent system with the rest of the world. Why in the world would American inventors want to change to a demonstrably inferior system of patent rights, just because the rest of the world and a few obscenely profitable IT companies think we should? As I mentioned a few days ago, only about 2% or less of cases actually get to litigation, and more than half of those get settled out of court. Has everyone forgotten that the actual costs for IT companies amounts to less than 1/4 of One Percent of their profit margin? Why are they so quick to destroy my patent rights, just so they can make a few more millions at everyone else’s expense? What is really sad is that folks like Leahy and Hatch actually seem to really believe that they are *modernizing*, or otherwise improving the US patent system. If it isn’t broken, Don’t Try To Fix It. Can anyone tell Why it is broken? Because the IT guys are whining? Or what?

    Best wishes,
    Stan E. Delo

  15. Gene Quinn April 13, 2009 1:09 pm

    Denis-

    So you think Sarah Palin is an embarrassment? That seems particularly gratuitous.

    As for applications not being out of control around the world in countries that use first to file, of course you are right. Whether you like it or not, inventors and corporations want US patents. To compare the experience of the rest of the world with the US is naive at best. We have no idea what this will mean to the US patent system because everyone already wants to use the US patent system and get US rights because the US is the overwhelming market. Sorry, but you suggesting that we can learn from the rest of the world is simply wrong. The fact is that US patents are valuable and patents in most other countries are not.

    -Gene

  16. Ron Katznelson April 14, 2009 2:47 pm

    Denis O’Brien:
    “What possible evidence is there that the PTO would be deluged by applications in a FTF system??? Look around, boys, do you see every other patent office in the world deluged? I don’t.”

    Dennis,
    Apparently, you have *not* read our letter or looked at the clear and convincing evidence in Slide 9 of my FTC testimony linked in the letter. It shows that under FTF pressures, the relative amount of “clutter” applications that do not deserve examination is nearly FIVE TIMES that found under filing conditions that have no FTF pressures. Although much of the excess “clutter” applications filed under FTF pressures at the EPO may ultimately not get examined, FTF “clutter” applications would be examined at the USPTO because the USPTO has no mechanisms for disposing of applications prior to examination. In contrast to international pre-examination procedures, US applicants pay all examination and excess claims fees upfront; USPTO does not issue a pre-examination search report; USPTO does not issue preliminary patentability reports on US applications; USPTO has no process for deferred examination – a process that eliminates having to examine every filed application. In this environment, US applicants have no incentive to abandon the “clutter”. If anything, some applicants would still try to get *some* claims allowed from the “clutter”. These patents would be the ultimate fodder for trolls…

    Read this and other analysis in the updated and expanded version of our letter at
    http://works.bepress.com/cgi/viewcontent.cgi?article=1057&context=rkatznelson
    We continue to accept more signatories this week. If your company agrees with our position, please email its legal name and city to ron@bileveltech.com in order to be added to our list.

    Ron Katznelson

  17. Ron Katznelson April 14, 2009 2:50 pm

    Denis O’Brien:
    “What possible evidence is there that the PTO would be deluged by applications in a FTF system??? Look around, boys, do you see every other patent office in the world deluged? I don’t.”

    Dennis,
    Apparently, you have *not* read our letter or looked at the clear and convincing evidence in Slide 9 of my FTC testimony linked in the letter. It shows that under FTF pressures, the relative amount of “clutter” applications that do not deserve examination is nearly FIVE TIMES that found under filing conditions that have no FTF pressures. Although much of the excess “clutter” applications filed under FTF pressures at the EPO may ultimately not get examined, FTF “clutter” applications would be examined at the USPTO because the USPTO has no mechanisms for disposing of applications prior to examination. In contrast to international pre-examination procedures, US applicants pay all examination and excess claims fees upfront; USPTO does not issue a pre-examination search report; USPTO does not issue preliminary patentability reports on US applications; USPTO has no process for deferred examination – a process that eliminates having to examine every filed application. In this environment, US applicants have no incentive to abandon the “clutter”. If anything, some applicants would still try to get *some* claims allowed from the “clutter”. These patents would be the ultimate fodder for trolls…

    Read this and other analysis in the updated and expanded version of our letter at
    http://works.bepress.com/cgi/viewcontent.cgi?article=1057&context=rkatznelson
    We continue to accept more signatories this week. If your company agrees with our position, please email its legal name and city to ron@bileveltech.com in order to be added to our list.

    Ron Katznelson