Much Ado About Nothing Over First to File

By Gene Quinn
November 7, 2009

Just about 24 hours ago I posted an article relating to my changing position with respect to first to file, and already there is something of a firestorm.  I understand there are those who feel I have abandoned them and adopted a naive view of the world. But excuse me for recognizing the new tone and identifiable actions taking place at 600 Dulany Street.  Yes, I have been an ardent supporter of first to invent for years, but I have been questioning my views for some time, as I speak with attorneys, inventors and others.  Then several things recently caused me to realize the benefits of first to file for the independent inventor community, and then I heard USPTO Director David Kappos explain that in 2007 only 7 cases were decided in favor of an individual who invented first and filed second.  Kappos explained “we already have a de facto first to file system.”  All this arguing for 7 cases?  Cases where once the rule changes behaviors will change to the point where some, perhaps most or even all of those 7 cases will never happen again because everyone will know they need to file rather than wait.  On top of that, it is inarguably good, correct, legally sound and business appropriate advice to file sooner rather than later.

In a spirited comment chain associated with the aforementioned first to file article many supporters of first to invent are coming out in force, and they don’t even realize they are making arguments that hardly support their position and in fact support the exact opposite position.  I would like to address several here.

First, it seems that many believe it is not appropriate to file provisional patent applications because many of the applications that are filed are inadequate and insufficient.  It has been brought up that an appropriate and good provisional patent application needs to be identical to a nonprovisional patent application, perhaps without having been spell-checked.  Obviously this is a gross overstatement of the law, and not correct.  It is true that a provisional patent application needs to be as complete as a nonprovisional patent application in terms of disclosure, but nothing more.  There are no formalities that need to be met, and it is the substance that matters.  Nonprovisional patent applications exalt form over substance in large part, but a good provisional patent application needs to focus on substance.  Whatever someone of skill in the art would understand to be described and disclosed has been described and disclosed.  So those who think they need to write a nonprovisional patent application and file it as a provisional are overstating, don’t understand the law or have not developed a sophisticated strategy.  But don’t vilify those who do understand the law, business realities and have developed fundamentally sound strategies.

Second, there seems to be a belief that first to invent can be relied upon while provisional patent applications are inappropriate to rely upon if an invention matters.  But what exactly does this mean?  If you rely on first to invent and are operating at all responsibly you are keeping an invention notebook that will meet evidentiary burdens if and when it is necessary to demonstrate conception prior to the conception of the party who was first to file.  You are also keeping an invention record that will demonstrate diligence as well, but lets focus on the substance of what is in the notebook or record for a moment.  Appropriate notebooks and/or invention records will be able to identify conception and when it occurs.  Of course you never want to box yourself in when you present evidence to say a date certain was the date of conception, but you had better have an appropriate record for if and when it does matter, as it did in Oka v. Youssefyeh, where the senior party and junior party both were able to prove the same date of conception.  Ultimately the Federal Circuit said any ties go to the senior party, so it is not fanciful to identify an oddball fact pattern where actual dates matter.  Here is a real case, and given the extremely limited number of interference proceedings even one case is a statistically relevant sample.

Now, if you are relying on first to invent and keeping the records that you should be keeping your invention notebook or invention record will detail, describe, identify and date conception so that others skilled in the art will be able to look at the notebook/record and understand what you did, what you knew and come to the believe that you did in fact appreciate what you had.  If you have this, you have provable conception.  If you have provable and identifiable conception you also have a disclosure that informs and supports the invention.  It is pure folly to suggest that a provisional patent application, albeit perhaps not as formally structured as a nonprovisional patent application is a waste of time but also believe that the cryptic notes of an engineer or scientist are superior and even preferable.  If the notebook provably demonstrates conception then it can be filed as a provisional patent application at least for the purpose of staking a claim to the conception that is detailed with enough specificity to later support an argument in a first to invent regime.

Finally, let me address the matter of what gets included in a typical invention notebook or invention record.  It is almost unbelievable for me to hear patent attorneys state that they prefer the notes of inventors, scientists and engineers with respect to detailing and describing conception over a provisional patent application.  Every patent attorney and patent agent knows the level of detail that is provided by inventors, even those who work for large corporations.  The invention disclosures are as a rule laughably inadequate.  One paragraph passes for a “complete” explanation of the invention.  The truth is that patent attorneys are typically given very little from an inventor at the beginning of the process.  In fact, inventors give such little information that at times the true inventor on the patent application that is actually filed should really be the patent attorney, not the inventor.  That is obviously not always the case, but this is the big joke in the patent attorney community.  Getting information from inventors is a little like herding cats.  They are creative and they understand their invention, and they seem to universally believe that cryptic information ought to suffice.  Remember, the goal is not to explain the invention so that the inventor understands, the goal is to explain the invention so that those who are not the inventor understand.

It boarders on the absurd to prefer cryptic invention notes and invention records over provisional patent applications that are drafted by an attorney or agent who understands the legal requirements for providing an enabling disclosure that also satisfies the written description requirement. It also strikes me as particularly odd to say that those with nothing more than an idea will not have any time to figure out the particulars required to describe their invention. Why exactly are we worried that those without an invention may be impacted by first to file? They are already negatively impacted under first to invent because they have not yet invented and have no conception.

Most are undoubtedly familiar with the 80-20 rule, which goes something like this — it takes 20% of  the time to complete 80% of the project, and the remaining 20% of the project takes 80% of the time to complete.  That is true certainly with respect to software, which is my area or expertise, and it is true for many other areas of invention.  It also happens to be true for writing patent applications as well, at least if you think outside the box and adopt a business friendly approach to writing patent applications, mining inventions and identifying open space that can be filed.  I realize that somewhere between 70-80% of patent attorneys and patent agents start by writing the claims, and then write the specification.  I do it the other way, and I can’t for the life of me understand those who write claims first.  It is not wrong, just a different approach, but not the way I think.

I write text and then translate into claim language, which I find much easier to do.  By doing this, and starting with a thorough patent search, patentability assessment, some mapping and working with the inventor to continually refine understanding of what is most unique compared with the prior art I am able to identify the base target, describe it in English, layer on specifics that take the form of alternative embodiments and versions and ultimately create an extraordinarily detailed specification that will support a multitude of claims.  To do this take about 20% of the time.  The remaining 80% of the time is spent explaining how hip bone 15 is connected to thigh bone 18, writing sets of claims and going back to continue to expand upon the disclosure to continually mine new areas and expand scope.  I do not support filing crappy provisional patent applications, and it doesn’t mean that a provisional patent application cooperatively created between inventor and patent attorney is “easy to get around” or at all inferior compared to an invention notebook or invention record.

Stop looking at first to file as a curse.  It is an opportunity for inventors, small businesses and start-ups that are willing to see opportunity rather than obstacles.  Venture capitalists who are savvy and willing to explore new methods and models for protecting early stage technologies will be handsomely rewarded.  Savvy independent inventors, closely held businesses and businesses that are ordered to take direction from venture capitalists or lose funding will clean up, and clean up big.  And for crying out loud, when only 7 cases out of nearly 500,000 applications a year change as a result of first to file versus first to invent there is no way that first to file will cripple the economy or cost jobs.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 29 Comments comments.

  1. Pissed off Programmer November 7, 2009 4:26 pm

    -Gene

    How would this affect prior art overturning patents? I already have a problem with people not getting credit when they re-invent the wheel not getting credit. I know there is no good way to prove that you really did re-invent the wheel, but we all know it happens a lot. The first to file gets all the credit and everybody else gets shafted. It feels like a bad game of musical chairs. Maybe if there weren’t so many bad software patents I wouldn’t feel this way. Then again, if there weren’t so many bad software patents, I might not be worrying about this stuff at all.

    I understand the practical and statistically benefits that you outlined, but what about those 7 cases, are they really worthless? It feels like you guys are saying it’s ok to throw 7 people under the bus if it makes things easier for the patent office and the patent lawyers. What happened to the government serving the people? Do those 7 cases have any less rights just because there are fewer of them?

  2. Gene Quinn November 7, 2009 6:40 pm

    POP-

    All good questions. Those 7 would be affected if they do not change their ways, but with a change like this it is safe to say virtually everyone will change to meet the law.

    With respect to making it easier for the USPTO, it will, but not for the reasons you think. This change is actually guaranteed to make more work for the USPTO and more challenges based on priority. It will still be “the first inventor to file” so you cannot steal someones invention and beat them to the USPTO. With everyone engaging in a race more will be filed, more frequent filings and that means eventually the USPTO and the courts are going to have to sort out who invented what when, which will likely be more complicated and more frequent. The reason is should make it easier for the USPTO is because they need to increasingly work with other patent offices around the world, at least with respect to preliminary searching and working up the applications prior to examining based on the legal standards of a country. This should expedite the patent process and work to cut into the extremely long delays experienced now, and maybe get back to a reasonable patent pendency. That would be good for all inventors if it happens. So there are many other reasons this change COULD be good… and I don’t mean to yell that just stress it. Like everything in life the devil will be in the details.

    You raise excellent points about re-inventing the wheel. It is a problem currently and one that causes a lot of trouble for independent inventors. Not sure what the answer is. Not punting, just don’t have a solution, I do think about it though.

    This change could result in more documented and findable prior art, which would be a good thing for knowledge and to make sure truly new and unique inventions are patented. I will have to noodle on this some more though.

    Bad software patents do no one any good. To the extent Bilski makes any sense it is because to get a software patent now you have to really have something that can be described with extraordinary detail. That is good. I would like to see the Bilski language tamed down a bit, and the law to evolve to require a “there” to actually be “there” in order to get a software patent.

    -Gene

  3. Just visiting November 7, 2009 7:36 pm

    I think the 7 number is a little misleading.

    The USPTO doesn’t go out of its way to declare an interference. I think there would be a lot more interferences if the USPTO actually took the time to find these instances.

    Regardless, I don’t mind going to a first to file. Provisionals can be used to get a date. A provisional might not be good in some instances, but in may instances, enabling the invention under 112 shouldn’t be hard.

    Going to a first to file will just change how attorneys treat new disclosures and the type of advice they give to clients. There will be quicker filings (some will be of lesser quality), but it will clean up things.

    Besides, the way the USPTO treats 1.131 declarations is a joke. Honestly, I have no idea as to how anybody could reach back a year unless you have proof of actual reduction to practice. The USPTO seems to want a day by day or hour by hour description of what happened between the time of conception until the critical date.

  4. Robert K S November 7, 2009 10:03 pm

    “Besides, the way the USPTO treats 1.131 declarations is a joke. Honestly, I have no idea as to how anybody could reach back a year unless you have proof of actual reduction to practice. The USPTO seems to want a day by day or hour by hour description of what happened between the time of conception until the critical date.”

    No, that’s not what is required to meet 1.131, though if you have a month or two gap that you’re unable to explain, your problems are going to go beyond what an examiner is going to be able to help you with and you’re going to have to go to a higher level (or give up). That’s only just. Eliminating Rule 131 practice entirely, that would be unjust.

  5. David Boundy November 8, 2009 9:43 am

    Gene, your title on this article is approriate, “Much Ado About Nothing” – you’re avoiding dealing with the huge economic costs, and making much ado about tiny ones.

    >On top of that, it is inarguably good, correct, legally sound and business appropriate advice to file sooner rather than later.

    No question. But that’s not the issue. The decision of whether and on what to file is a much bigger “appropriate business advice” issue than “when.” You don;t address the question of how a business is to do the filtering in a cost-effective way.

    In your previous post, you put a cost of $1500 on a provisional application. You’ve made the same logical mistake as the PTO – considering only the parts of the process in which you are an active participant, and assigning zero cost to everything else. The cost of preparing a provisional is not just the fee paid to you, it’s the time that the patent process takes away from the company’s business operations. For a typical startup, each provisional takes one-half to a full day of the inventor’s time, and this is the company’s key person. New 102 requires that the inventor spend that time on every provisional application, most of which are going to be dropped before maturing into a non-provisional. That’s catastrophic for the business.

    In most business context, all other things equal, waiting to make a decision has big value – more time means more information which means better decisions. The 102 rewrite takes that time away.

    By the way, I think you should not refer to this as “first to file.” That’s misleading. If we’re only talking abour resolving an interference, then “first to file” is the right name. But a more accurate name for section 102 is “weak grace period” or “new 102” or anything else you like – but you’re suckering yourself into a bad analysis by a bad choice of name.

    David

  6. David Boundy November 8, 2009 9:45 am

    And finally, you’re making your argument based on a few isolated anecdotes. Look at Ron Katzenelson’s numbers from thousands of applications – the exceptional isolated cases you cite are really atypical.

  7. Paul F. Morgan November 8, 2009 10:23 am

    You are certainly right that even many patent attorneys do not understand who wins an invention priority contest. They prefer an imaginary excuse for their patent application filing delays. They don’t even read 35 USC102(g) correctly, where it is spelled out: Bare conceptions do not win. Even with the requisite conception PLUS continous dilligence towards an actual or constructive reduction to practice, they rarely win. Whomever files first (and that includes provisionals) with an adequate enablement example and a description of the invention has a constructive reduction to practice, date-certain, and is strongly presumed to be the first inventor.

  8. Karl Enevold, PhD November 8, 2009 11:16 am

    Gene,

    As an under funded inventor, I totally disagree with your point of view. I have not been able to file, as the process cost would cripple me. In these days of recession, some of us are not employed and struggle to meet our daily expenses for room and board. Your line “On top of that, it is inarguably good, correct, legally sound and business appropriate advice to file sooner rather than later” is disingenous at best, if you claim to want to represent small business and individual inventors. Obviously, you are now pro big business. The real inventors get ignored in a first to file system, as patent attorneys and prosecution is prohibitive for all but the well off. What would have happened to Goodyear in this system? Languishing in jail until he died. I think your change of attitude is total BS!

  9. Just visiting November 8, 2009 12:00 pm

    “No, that’s not what is required to meet 1.131, though if you have a month or two gap that you’re unable to explain, your problems are going to go beyond what an examiner is going to be able to help you with and you’re going to have to go to a higher level (or give up). That’s only just. Eliminating Rule 131 practice entirely, that would be unjust.”

    I have had a couple months between critical date and date of filing and I had a dozen or so different explanations (along the timeline) as to what happened and when. However, the declaration was still treated as defective since, e.g., I didn’t describe what happened between July 3 and July 13th and between July 13th and July 17th.

  10. Just visiting November 8, 2009 12:06 pm

    “I have not been able to file, as the process cost would cripple me. In these days of recession, some of us are not employed and struggle to meet our daily expenses for room and board.”

    Unfortunately, no matter your circumstances, you cannot wait to file. Under current law, you can only reach back 1 year (which IMHO is nearly impossible anyway). Also, if you publicly disclose your invention, the clock is aleady ticking.

    Although I think it normally would be a bad idea, I would recommend any inventor who cannot pay for an attorney to buy the book “Patent it yourself” and file your own provisional. It might not get you much, but if you wait too long, you are going to be out of luck anyway. Either someone will beat you to the punch by more than 1 year or you’ll slip up somehow and unknowingly dedicate your invention to the public. I cannot tell you how many times I have sat in a conference room and told an inventor “nice idea, but if you came to me 6 months ago, we could have helped you. However, since you disclosed your invention to the public 18 months ago, you cannot obtain a patent on it.”

  11. Karl Enevold, PhD November 8, 2009 12:24 pm

    Hello Just Visiting,

    Priority dates sometimes do not matter in you can think outside the box. I have patentable technology/claims that date back to 1987, 1990, 1992. I have not disclosed anything and still have:

    A biodisquised implant or dip stick technology
    A tissue regeneration device and process
    An infection control technology
    A autologous implant technology

    To date, no one has patented them and no one has figured out how I did it and published, which leaves me the ability to reinvent “my wheel” when I can afford it. There are concepts that have been ignored by the engineers and MD’s that dominate these areas.

  12. Gene Quinn November 8, 2009 1:53 pm

    Karl-

    You say: “I have not been able to file, the process cost would cripple me. ”

    Inventing can be a costly business, but that is the way it is now under first to invent. No different under first to file. I see you also say later in the chain that your inventions are still unknown. That is all well and good, but please explain to me how your situation would change under first to file? The reality is your circumstances would be exactly the same and you would be completely unaffected. Thus, I see no rational reason for you to act as if first to file would be disaster. It wouldn’t change your situation at all. You will wouldn’t have money to pursue your invention. That is 100% obvious given that under first to invent, which is currently the standard, you still have not filed.

    On top of that, if you cannot afford the $110 filing fee for a provisional patent application then you should not be an inventor. I have a system that allows people to create extremely detailed provisional patent applications and very few use it because they are cheap. For $110 filing fee $99 to use my system and maybe $200 in drawings you could have an enormously detailed provisional patent application on file, the first steps toward acquiring an asset and something to show potential investors who might be interested in funding you to move forward. Instead you do nothing and complain somehow that first to file will cripple you. NEWSFLASH: You are not doing well under first to invent! Perhaps it is not a law problem, but something you are not doing properly. Have you ever thought of that?

    You say: “Obviously, you are now pro big business.”

    I would appreciate you keeping things real and honest and not spreading falsehoods. Everyone who is intellectually honest knows that is not the case. Why do you find it necessary to ignore what I say and put words in my mouth? Who made you King?

    You say: “The real inventors get ignored in a first to file system…”

    Simply not true. False. Wrong.

    You say: “I think your change of attitude is total BS!”

    And I think you are bitter and your position is factually incorrect and you are intellectually dishonest. You have no money to pursue your inventions and you are mad. The fact is you have no money under first to invent, and you have no money under first to file. Your situation hasn’t changed. In fact, today under first to invent those inventions on the shelf are of absolutely no value to you. You have not been diligent and you could NEVER prove you are the first to invent and entitled to a patent anyway. You see, that is the trouble. You are assuming you know the law and that since you invented first you would prevail. The law says that you have exhibited no diligence so if someone files on those inventions before you they would receive the patent, not you.

    -Gene

  13. Gene Quinn November 8, 2009 1:57 pm

    David-

    Why do you continue to ignore the facts and truth about the law? You have no evidence other than “trust me, I do these deals.” Then you incorrectly say I am relying on anecdotes. No, I am relying on truth and facts. The fact that you don’t like reality doesn’t mean it is not real.

    Anyone claiming the economy will collapse as a result of first to file cannot be taken seriously. In at least 99.99% of all patent applications the first to file was the first to invent. The law doesn’t care whether you are actually the first to invent, the law cares whether you have the proof coupled with diligence, and that is why the overwhelming majority of second filers fail in an Interference. They cannot meet the legal standard and are basing business decisions on emotion and an inaccurate understanding of the law.

    -Gene

  14. Gene Quinn November 8, 2009 2:08 pm

    David-

    You say: “you’re avoiding dealing with the huge economic costs”

    No, I don’t avoid dealing with them. I am just trying to keep grounded in facts. In at least 99.99% of applications the first to file is the first to invent. You can argue until you are blue in the face and you cannot change that reality.

    You say: “You’ve made the same logical mistake as the PTO – considering only the parts of the process in which you are an active participant, and assigning zero cost to everything else.”

    That is simply not true and you should know that. I am a business person first, patent attorney second. Patents are a means to an end, not the end themselves.

    What you are ignoring is the benefit and acting like there will be none. If you have clients interested in cutting their procurement costs and protecting everything that could be patented then let me know and I will explain how to do that. But telling me I don’t have my eye on the ball is not helpful, and wrong. Who would not want to protect everything, not forcing decisions and mistakes to be made and doing it while saving money? It can be done, and if you would just stop for a minute and see the bigger business potential you would understand this is a huge opportunity, particularly for you and the folks you represent. Anyone with funding or a desire to obtain funding should not fear first to file. The strategies do not require first to file, and can be applied presently. But if first to file does happen those without appropriate strategies will fail, lamenting the past and pursuing defeating courses of action.

    The fact is the present system doesn’t work, the status quo is not an option, and it does no one any good to pretend that the couple situations a year where first to invent changed who won the patent will cause the economy to stop working.

    -Gene

  15. patent leather November 8, 2009 2:27 pm

    I hate to disagree with David Boundy because he is such a respected and well liked member of the patent bar, and I’d like to buy him lunch sometime as thanks for all his hard work (my practice and interests would have been severely stung by any of those “new rules.”)

    One’s viewpoint in life is generally dictated by their own personal experiences, and I have had some nightmare experiences with our “first to invent” system. For example, one client files and then discloses his invention to party X who then immediately files on it and tries to capitalize on it. Most license agreements require a warranty of non-infringement, so this ties up the technology for years while the interference situation was resolved (we ultimately prevailed). As another example, some validity studies I have worked on are inconclusive because it is unclear as to the ability of the patent owner to swear behind some relevant references. And now I generally advise clients to wait at least a few months (preferably 6+) after filing before disclosing their invention, to help avoid the scenario above. It would be nice if an inventor could file his patent application and then disclose it the next day without worry.

    While David mentions taking time away from key people, if the inventor(s) are taking their time to decide what makes sense to file, they certainly could not be considered diligent. Therefore, they could not “swear behind” based on diligence and could only do so based on an actual reduction. And if they are waiting on more information before deciding whether to file, it is probably unlikely that they have invested the time and money to have an actual reduction to practice. While the USPTO will usually accept a 1.131 affidavit without too much inquiry, I have never and would never file one based on diligence because that would probably be fatal for the patent.

    I realize different people have their different experiences and circumstances, but I personally would be very happy with the “new 102.”

  16. Steve Perlman November 8, 2009 6:34 pm

    I have extensive, on-the-ground, experience of building companies and products with patents, and as you can see in my comments to Gene’s prior FTF article, he and I are completely talking past each other on the FTI/FTF issues. So, if you’d like an alternative perspective from someone who has built major companies and products from scratch relying heavily on the FTI system, please see my comments contrary to Gene’s prior FTF article here:

    http://www.ipwatchdog.com/2009/11/06/kappos-talks-patent-reform-at-uspto-inventors-conference/id=7172/

    (You also will be entertained by some colorful remarks by Gene, due to a misinterpretation of a self-deprecating sentence as being directed toward him. 😉

    One thing I will add: You’ll find in my comments that FTI allows my companies to file less than 1/10th the number of patents we would under FTF, because FTI gives us enough time to flesh out products, determine which inventions are needed, and just file those as patents. Given that we spend $15-$30K on a patent, this is a big savings, and it is a cost deferred typically after we close principal financing.

    Gene is advocating filing less expensive provisionals on every invention at conception under FTF, which he described in his comments to the prior article as costing $1,000-$1,500 each, as an alternative to filing 10 provisionals per eventual filed patent, or spending over $10-$15K upfront, to later file one $15K-$30K patent based on one of the provisionals. And, that’s just legal fees. My top engineers–the ones doing the patentable pioneering work–would have set aside time to make the provisional disclosures, of which >90% of the time would be wasted, and it would be tying them up as the earliest stages of the project, when they are most needed. And, of course, we simply would not have the $10-$15K to spend on a sea of provisionals in the early stages of a startup anyway.

    The fact there are only 7 interference hearings/year (despite the fact that FTI is used to establish priority in patent examinations) and the US by far leads the world in startups is evidence the FTI works, not that FTF is equivalent.

    There is far more information in my prior comments in the prior article, including the support for a point that everyone has glossed over (including Congress): that in the last 10 years, not a single paper by a Constitutional scholar has concluded that FTF is Constitutional. Indeed, the last 2 CRS Reports state unequivocally that FTF is Constitutional, and both cite a paper the unequivocally concludes it is NOT, and I’ve been unable to get that error corrected. So, this entire debate may be moot.

    Here’s my background:

    I hold 91 patents, and have about 100 pending. I’ve run 8 startups, I’ve been a Division President of Microsoft and a Principal Scientist of Apple. I’ve developed QuickTime, WebTV, Mova Contour, OnLive, and lots of smaller inventions, like the initial Windows Mobile chipset, modems, wireless systems, lens system, and alternate energy systems. I’m a pure Practicing Entity: every patent I’ve filed is for a product I’m developing. I’ve never licensed my patents, and never had to sue anyone for infringement. That said, were it not for the strength and depth of my patents, I never would have been able to get funding or secure partnerships for my ventures.

    Steve Perlman
    President & CEO
    Rearden, OnLive & Mova

  17. Gene Quinn November 8, 2009 6:57 pm

    Steve-

    What an ego you have. Colorful remarks as the result of a misinterpretation? You are a funny guy. Everyone can see for themselves the arrogance of your comments.

    Yes, you can file provisionals for $1,000 to $1,500 right now with excellent attorneys doing all the work. If you want to spend substantially less then I can show you how and you won’t lose any quality. You can choose to believe it or not.

    If your top engineer’s time is too valuable to spend a single hour working on a disclosure then you will get exactly what you deserve, which is nothing.

    You say: “The fact there are only 7 interference hearings/year (despite the fact that FTI is used to establish priority in patent examinations) and the US by far leads the world in startups is evidence the FTI works, not that FTF is equivalent.”

    No, really, it is evidence that there is virtually no difference between first to file and first to invent.

    Your background is indeed very impressive, which makes it all the more curious why you make sure awful business decisions and fail to see business opportunity but rather choose to cling to a model that doesn’t work. It is also curious how someone who is as successful as you claim to be wouldn’t be able to navigate a first to file world. You have already admitted that you won’t be able to innovate or keep up in a first to file world. Your employees and investors must love knowing that your business will collapse and you have no plans for what is really inevitable sooner or later.

    -Gene

  18. patent leather November 8, 2009 8:05 pm

    Steve: “One thing I will add: You’ll find in my comments that FTI allows my companies to file less than 1/10th the number of patents we would under FTF, because FTI gives us enough time to flesh out products, determine which inventions are needed, and just file those as patents. Given that we spend $15-$30K on a patent, this is a big savings, and it is a cost deferred typically after we close principal financing.”

    Please see my earlier post. You could not honestly rely on FTI in your circumstances because delaying filing to “determine which inventions are needed” is not being diligent. As all attorneys that are reading this board should know, the diligence standard is extremely difficult to satisfy. You could use FTI to establish priority based on an actual reduction to practice (without regard to diligence), but I am assuming if you aren’t sure whether to file an application on an invention yet, you likely don’t have an actual reduction to practice yet. If you could pull off a cheap actual reduction to practice upon conception, that would solve the problem (eliminate the diligence requirement), but I can’t imagine that would be cheaper/easier then a filing a quick provisional.

    If you did file any of those applications that you waited to file because you were evaluating the marketability of it, and then you get yourself into an interference situation (or litigation based on FTI), you will most likely lose due to the extreme difficulty in satisfying the diligence standard. So I don’t see how FTI helps you in your circumstances.

  19. Gene Quinn November 8, 2009 8:24 pm

    Patent Leather-

    Just to pick up on your comment a bit… this is exactly why first to file will help. Inventors, engineers, scientists and even sophisticated businessmen simply do not know the law, they do not understand the legal requirements and worse yet they think they know everything. So they make horribly bad decisions based on inaccurate understanding of what the law requires. Certainty of first to file, among many other reasons, will make it far superior for the inventive community. In short, it will save them from themselves.

    -Gene

  20. Steve Perlman November 8, 2009 9:24 pm

    Gene-

    [To the extent my comments seem arrogant or egotistical to either you, or to anyone else reading your blog, please accept my sincere apologies. I mean it. I’m much better at making things than I am writing about issues. I’m not taking this much time to comment for the purpose of offending anyone or a vehicle for self-promotion. It’s because this is a very significant issue, and I do have highly relevant experience to share. Thanks.]

    Patent leather:

    We’re quite aware of our diligence obligations (I commented on that in Gene’s prior article). These were all inventions that met the standards for patentability. If we had the resources of a large company, we could have filed patents on all of the inventions (e.g. when I was at Apple and Microsoft, I had that option). But it is way too expensive to file patents for every invention in a startup. So, you have to triage amongst them.

    Regarding provisionals, perhaps one reason I see them differently is because of the nature of patents we file. Consider US7,548,272 which is a motion capture patent, particularly suited for 3D facial capture. It is 44 pages with 27 figures. The invention involves electronics, illumination, radiation, imaging, lenses, material science, psychophysics, timing systems as well as complex software. This is far more than a one-hour disclosure with a smart patent attorney. And, if you think this patent is complex, bear in mind that there were a vast number of other inventions–some even more complex–that we determined we decided not to build products out of, and we never filed patents on them. For example, we developed an invention using time-of-flight of light waves for measuring facial shape–a completely different approach. We decided not to pursue a product with it and did not file a patent. Recently, we’ve seen other companies introduce products using that approach. It works, but we did not have the resources to pursue it.

    A $1,500 provisional could not possibly be filed for this patent. Just generating the figures alone, many of which are grayscale images, cost us more than $1,500 in resources before we could even give them to the patent attorney. There was no substitute diagram we would use to describe the figures that would be less expensive. Indeed, I’ve seen the USPTO reject grayscale images in the past and require line drawing equivalents. In this case, they acknowledged the complex grayscale images in this patent were necessary to describe the invention.

    US7,548,272 is probably an average-sized patent for my startups. We have patents that are over 75 pages long with over 50 figures. We do have others that are smaller, but generally speaking, if an idea is really simple, it’s unlikely to be competitive in today’s market against the complexity of products being developed by major corporations.

    Under FTI, it makes it possible for a startup to get patents (and thereby get funding) to develop complex products that stand toe-to-toe with major corporations. We are able to operate very efficiently, and not make filings for complex inventions that will never see the light of day as products. Provisionals definitely have their uses, but a provisional for US7,548,272 is definitely not a one-hour disclosure for a $1,500 filing.

    Also, Gene, you have not commented on the Constitutionality question. You asked for my basis for FTF being unconstitutional, and I gave you a list of all the papers the law firm I hired could find published on the question in the last 10 years, and none conclude FTF is Constitutional. The 2 CRS Reports on patent reform state that FTF is Constitutional and cite a paper that specifically concludes FTF is NOT constitutional. No matter whether you agree or not with the paper, clearly the citation is in error. And, I’d be interested in what current references you have to support the Constitutionality of FTF.

    Steve Perlman

  21. Gene Quinn November 9, 2009 1:01 am

    Steve-

    I have commented on the Constitutional issue when I said earlier in the thread that there is nothing in the Constitution that requires first to invent. It is a completely bogus argument. It is not surprising though that a number of academics have written about it. Academics need to get published in order to advance and get tenure, and in law schools the ones making decisions on what to publish are law students, which is an irony all to itself. In any event, law students think Constitutional issues are the most important ones even though they almost never come up in life. They also think they understand the Constitution and are experts on it after a single 4 credit course.

    Substantively, the intellectual property clause ( Article 1, Section 8, Clause 8 ) gives Congress the following power:

    “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries…”

    As you can see, there is nothing there that requires first to invent as the standard. Add on to that the fact that the law will change to reward the “first inventor to file” and you can see it is a completely bogus argument.

    I am sure you will try and counter by saying the use of the word “inventors” in the clause somehow means “first to invent,” but that too will be bogus. Under the first to invent standard many who are truly the first to invent are prevented patents simply because they waited to long to file an application. So the only “Hail Mary” pass here that would work is to argue that pretty much since Thomas Jefferson wrote the Patent Act the requirement that inventors not delay in filing is unconstitutional, which is absurd.

    -Gene

  22. Robert K S November 9, 2009 1:51 am

    “I have had a couple months between critical date and date of filing and I had a dozen or so different explanations (along the timeline) as to what happened and when. However, the declaration was still treated as defective since, e.g., I didn’t describe what happened between July 3 and July 13th and between July 13th and July 17th.”

    In case “Just visiting” is still reading, given the above fact pattern, a case like that should be winnable on appeal. If the BPAI doesn’t give the examiner a beat-down, the CFAC would, because it’s clearly established that the inventor doesn’t have to drop everything.

    Timecards are also pretty useful in establishing diligence, especially if the timecards show hours being allocated to different accounts, where the accounts represent different projects and one of the projects is attested to as being the claimed invention. Even where there may be a gap of a week or two, the timecard can show that the inventor maintained diligence even where he wasn’t working on the invention, because he was working on briefly something else that demanded his attention.

    But sorry your examiner gave you a hassle. That’s what examiners sometimes do, and that’s why good practitioners fight back with the law and the facts.

    RKS

  23. Steve Perlman November 9, 2009 2:36 am

    Gene-

    Only 1 paper of the 9 we found was written by a law student. Ironically, it was the one erroneously cited by the CRS Reports.

    Like you, the law firm that did the research for me was concerned that law student papers would be less credible, and checked to see which were from law students (and found only one).

    Just to be clear, are you saying that law students recommend what law professors publish? (Sincere question: I don’t know what the protocol is at law schools.)

    I don’t know anything about Constitutional Law, but what I have found in these papers is they have gone to the Federalist papers and other contemporaneous works to establish what the intention of the clause was and, yes, what the meaning was of the word “inventor”. Apparently, there was also a pragmatic issue at hand for resolving priority of patents filed in different states under a Federal patent system, which was handily solved by first-to-invent.

    It is striking, though, that there is a lack of published papers supporting FTF being Constitutional. One would think that Constitutional scholars have no stake in the matter and would at least come down evenly on both sides of the question. If I’m able to get the CRS Report corrected, it will be interesting to see what citation they use.

    In any case, thank you for your response.

    Setting this aside for the moment, you said you could show me how to file provisionals for $1,000-$1,500 that provide as much protection a patent. Given the complexity of a patent like US7,548,272 that I cited above, with 44 pages and 27 figures, including ones with computer-generated imagery, do you think we could still do a defensible provisional on such a budget? If so, I’m definitely missing something, and I’m interested in how to do it. (If not, then perhaps you could scope out the kind of patent that could be protected by a provisional on a budget.)

    What has been hard about this patent reform debate is that it has been focused on general concepts, rather than specific examples, which is why I’m asking the question about a specific patent. US7,548,272 took a lot of elements to make it work, but end result was a groundbreaking invention.

    Thank you again.

    Steve

  24. American Cowboy November 9, 2009 1:17 pm

    Gene, you describe your process of application drafting before drafting claims as: “I write text and then translate into claim language, which I find much easier to do. By doing this, and starting with a thorough patent search, patentability assessment, some mapping and working with the inventor to continually refine understanding of what is most unique compared with the prior art I am able to identify the base target, describe it in English, layer on specifics that take the form of alternative embodiments and versions and ultimately create an extraordinarily detailed specification that will support a multitude of claims.”

    I bet that does not get done on the very day the inventor first discloses to you by bringing in his prototype.

    Consider this commong hypothetical: under first to file if you get the disclosure, go through your process described above to draft your provisional, which you then file. Between those events, someone else files on the same subject matter. Your client loses and you get sued for losing his rights. In a first to invent world, you get to point to the prototype to save your client and yourself.

    The value of first to invent is to allow time between invention and application filing for a decent application drafting, and perhaps even for the client to see how the market is before going to the effort at all (bless the USA for the one year grace period; too bad the rest of the world won’t harmonize to adopt it).

  25. Ron Katznelson November 10, 2009 1:50 am

    American Cowboy: “The value of first to invent is to allow time between invention and application filing for a decent application drafting.”

    This is only the tip of the iceberg, and only from a patent practitioner’s point of view. See my account of a more complete view on a companion thread at
    http://www.ipwatchdog.com/2009/11/08/making-the-case-against-first-to-file/id=7197/