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.