Patent Reform in the House. Demagoguing of First to File?

By Gene Quinn
March 27, 2011

On Wednesday, March 30, 2011, the House of Representatives Subcommittee on Intellectual Property, Competition and the Internet will hold a hearing on H.R. ____, the “America Invents Act,” which will take place at 1:30 p.m. in the Rayburn House Office Building. Much to the disappointment of many who have been challenging patent reform, we are now closer than we have been at any time over the last 5 or 6 years to amending U.S. patent laws. The House patent reform bill is exceptionally close to the Senate bill S. 23, with only one major difference that is sure to spur great debate, but the remaining thorny issue — the change from “first to invent” to “first to file” remains intact in the House version of patent reform.

The one major difference between the Senate and House bills is that the House would like to embrace an across the board prior user right defense, which is not in the Senate bill.  That is something to keep an eye out for and which I will write about in the near future.  But those advocating that the U.S. continue to keep first to invent went down to an overwhelming defeat in the Senate — 87 to 13 on the Feinstein Amendment.  They are, nevertheless, expected to come back and fight hard to undue the first to file provisions

Most of those fighting to keep first to invent started the fight by saying that the first to invent system helps the independent inventor, small business or start-up company that first conceives of the invention but doesn’t have the resources of a large multi-national corporation to reduce the invention to practice quickly enough to win a race to the Patent Office.  This argument fell apart completely once it is discovered that since October 1, 2004, only a single independent inventor prevailed and obtained a patent when they were the second to file a patent application. On top of that, there were only 25 small entities that prevailed as the second to file a patent application, and small entity is defined as 500 or fewer employees, which means it captures a whole host of companies that most would not consider very small.  So the truth is that the first to invent system doesn’t benefit the little guy, and it doesn’t benefit small business or start-ups either.  For more on this see First to File Fight Looms.




As it became apparent that the tide had turned in the Senate in favor of keeping the first to file provisions of S. 23 those who wanted to keep the U.S. a first to invent country changed their arguments.  Increasingly most vocal critics dropped the first to file benefits the little guy argument and started a more nuanced argument about what is referred to as “swearing back” or “swearing behind.”  Given that the U.S. is a first to invent country it is possible during the course of patent prosecution at the Patent Office to swear behind a reference that the patent examiner has used against you.  You swear behind a reference to demonstrate an earlier date of invention so that the reference can be removed, which means that the patent examiner cannot use it to reject your patent claims.  If we change to a first to file, the argument goes, there will be all kinds of horribly negative outcomes and calamities because there will be no ability to swear behind any more.

I’m here to tell you that those who are making a big deal out of the loss of the ability to swear behind are making a mountain out of an ant hill; not even a mole hill.  When you swear behind you file a 131 affidavit, so if this would be a huge problem you would expect that there would be a lot of 131 affidavits, but there are not.  The overwhelming majority of cases never have a 131 affidavit and there is never any need or attempt to swear behind a reference.

Unfortunately, the Patent Office does not keep track of 131 affidavits separately.  They are keyed into the system generally as an affidavit, without regard to what type of affidavit.  So I wasn’t able to obtain any useful data from the Patent Office.  I then asked around to a number of colleagues and the consensus seems to be that 131 affidavits are filed in less than 1% of patent applications.

Gerald Murphy, a partner with Birch, Stewart, Kolasch & Birch, one of the top patent filing firms in the country year after year, told me that he files 131 affidavits in less than 1% of his cases.  He explained:

It is very common to consider the possibility of filing a 131 affidavit when the “prior art” used to reject the claims is not a statutory bar. I would say that in at least 90% of the cases where filing a 131 affidavit is “considered”, it is ultimately decided not to file the affidavit for one of the following reasons: (1) the Examiner could likely find other prior art that had a similar teaching that was prior art under 35 USC 102(b) and therefore the relevant teachings in the applied reference are in fact “prior art”, (2) the inventor would not be able to show an earlier invention date or (3) the inventor/applicant wants to have a somewhat consistent approach to prosecuting the applications worldwide and is therefore willing to distinguish over the cited reference.

Although I have not performed an analysis of how many 131 affidavits I file in a given year, I believe that 131 affidavits are filed in less than 1% of the cases that I prosecute.

Indeed, as Murphy points out, even when you may be tempted to file a 131 affidavit to swear behind there are a lot of reasons why that never happens.  In my personal experience, if you file a 131 affidavit the patent examiner is at least somewhat likely to find earlier prior art that you cannot get around and you have now made an affirmative declaration about your date of conception.  Litigators hate, and I do mean hate, any affidavits because it is yet another set of facts that could poison the well, such as for example with respect to inequitable conduct.  It also creates more facts that can be assailed, witnesses to be deposed and it might not be effective anyway.

Not wanting to rely on just a single source, I asked around a bit more.  I was having difficulty finding individuals willing to go on the record, perhaps suspecting they might get sucked into the patent reform debate deeper than they would like.  So I turned to my good friend John White, a former patent examiner, long time patent attorney and the creator of the PLI Patent Bar Review Course that I have co-taught with him now for a decade.  John told me: “I have been practicing 25 years and in that time I have filed only one 131 affidavit.”  He went on to tell me that as an examiner he knows that the preferred prior art for an examiner is 102(b) prior art, because it is a statutory bar that cannot be sworn behind, so there isn’t even a chance to swear behind in a great many cases.

Some others that I talked to, who shall remain nameless, pointed out that the 131 affidavit practice is “loose.”  One person in particular told me that given that patent examiners are supposed to take affidavits at face value he wondered how many 131 affidavits get filed that merely declare an earlier date of invention without the requisite proof.  This person was a former long time patent examiner, who has seen his share of affidavits, and knows well how the real world works.

Indeed, as I have explained many times, in order to file a legitimate 131 affidavit you need the same evidence that you would to prevail in an interference proceeding.  In all my years of practice I have seen only a handful of inventors who would have had any chance to legitimately prove a date of conception earlier than their filing date.  Sure they have some information about the invention, but does it prove conception?  Rarely.  And when it does prove conception is that the conception that we ultimately move forward with in a patent application?  Rarely.

You see, most inventors think they know what they have invented that is unique but they are always shocked at the prior art located during a patent search.  So even if you take meticulous notes and have a great invention record, the question is whether you have proof of relevant conception; that conception that you built your patent application around.  Such legitimate proof isn’t quite as rare as a unicorn or leprachaun, but are more like Bigfoot — there are rumored spottings frequently but conclusive confirmation remains elusive.

There are a host of reasons why 131 affidavits are not filed, but the take-away message is that they are filed only rarely.  We shouldn’t allow something as rare as a legitimate 131 affidavit deter from making amendments to U.S. patent laws.

In truth, I think those that are against first to file are really most worked up about the loss of the across the board grace period for the statutory bar.  Today there is a grace period that applies to both inventor and third party activities.  So if you, or a third party unknown to you, publicly uses or sells the invention more than 12 months before you file a patent application you lose your right to obtain a patent.  But if you file within 12 months of a public use or sale then you are fine.  If patent reform passes and is signed into law the grace period would apply only to inventor activities.  So under the proposed changes if some third party unknown to you were to publicly use or sell an invention that is identical to what you want to claim before you filed your patent application you would be out of luck and unable to obtain a patent.  You would still have a 12 month grace period for your own public uses or sales, for example, but there is a diminishing of the grace period without a doubt.  Of course, even under first to invent there is a great risk associated with waiting and assuming you have a full 12 months because you never can really tell what those unknown third parties are up to, can you?  That’s why they are called “unknown.” See The Risk of Not Filing a Patent Application Immediately.

In any event, if the problem is with the grace period let’s talk about the grace period.  Misdirection and demagoguing the first to file issue has lead to the weakness of the arguments being exposed and the likelihood that no meaningful debate on the real issue — the grace period — will be possible.

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 74 Comments comments.

  1. Gerard Peregrin March 27, 2011 7:06 pm

    Thank you for your article. What I would like to read about are the issues related to the grace period and how they affect the patent rights of an inventor who fails to obtain the capital to fund the patent application after s/he has achieved patent pending status vis-a-vis a provisional patent application and after s/he has published patent claims in order to raise the capital for the patent application: Will an inventor loose rights to patent if the grace period expires before the capital is obtained to start the patent application process – even though every reasonable effort was taken to raise capital? In addition, does the USPTO use the provisional patent application database as a record of prior art? It seems that such a procedure would be helpful to the small business inventor who could publish his/her claims during the grace period while retaining a right to patent even after the grace period expires since s/he could point to the public record as a record of his/her prior art.

  2. tom gallagher March 27, 2011 7:32 pm

    In 27 years, I have filed maybe 6 or 7 131 affidavits, but they were effective.

  3. Scott McKeown March 27, 2011 8:54 pm

    Gene,

    It is true that declaration practice is relatively uncommon in the prosecution of patent applications, however, that is not the case in patent reexamination. The vast majority of reexamination cases will include declaration evidence, including antedating evidence. While the effort to assemble such evidence can be challenging, it is quite doable. Many companies are able to uncover a significant amount of conception and diligence evidence in their records (electronic storage is a wonderful thing) Interference counts require a relatively heightened level of proof, antedating declarations do not require the same level of corroboration.

    Keep in mind that patent reexamination is pursued for the most commercially valuable patents, and are almost always conducted in parallel to a litigation. Amendment is rarely an option due to intervening rights. Likewise, as RCE practice is not applicable in patent reexamination, and the universe of prior art is limited to that submitted, such evidence can be invaluable; I file such evidence fairly routinely.

    With Congress proposing to expand post grant options even further, I think the elimination of the ability to swear behind a reference is far from trivial.

  4. inventor0875 March 28, 2011 2:03 am

    The proposed wording of 102b (1) may kill many of the currently allowed Grace Period activities that inventors have used for over 200 years.

    With the viral distribution and morphing potential of all the new “disclosure” technologies such as internet, personal websites, blogs, emails, twitter, social networking, … it may be very difficult/impossible to proof that all the third parties “obtained” from the Applicant.

    Inventors will be forced to be more secretive and to avoid many currently allowed “Grace Period” activities.

    Small and disadvantaged inventors will be particularly impacted, because their limited resources require more activities with outside parties (obtain funding, partnering, prototyping, etc) where a disclosure might occur.

    Reword the proposed 102b (1) so that the Applicant only needs to establish that they “conceived” of the invention, before third party prior-art/disclosure that occurred during the one year grace period. This is much simpler for Applicants to establish and the USPTO/Courts to verify.

    The “derivation proceedings” sections (135) address the situation where an Applicant should not get a patent because it was derived from another party.

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

  5. inventor0875 March 28, 2011 2:57 am

    The current Grace Period in much of rest of World seems significantly flawed because an invention is considered not novel/patentable due to activities by the very inventors themselves.

    The U.S. and the Rest of the World need a grace period that encourage activities to advance inventions to market (to benefit society), while simultaneously allowing inventors to obtain their patents.

    This will also stop the rip-off of U.S. inventions that are considered not patentable by the Rest of the World, because of activities that advance an invention to market by the very inventors themselves.

  6. Michael Feigin, NJ NY PA Patent Attorney March 28, 2011 8:44 am

    Less than 1% might be true, but where it happens, it is more fair… an inventor shouldn’t be penalized for taking a few weeks longer to file his patent application than someone else who came up with the idea, only after the first inventor. It happens… having just filed same.

  7. Paul F. Morgan March 28, 2011 9:02 am

    It is quite ironic that some of the same people opposing this legislation by misrepresenting the reality of current “first to invent” law and practice are also inconsistently opposing the “first to invent” “prior user” defense and also missrepresnting ITS effect! Also not understanding that this defense is so carefully highly limited that it has almost never been used. Here are some of theese limitations in the current “first to invent” [[and USE] defense statute.

    “35 U.S.C. 273 Defense to infringement based on earlier inventor.”
    ***
    “(b) DEFENSE TO INFRINGEMENT.—
    (1) IN GENERAL.— It shall be a defense to an action for infringement under section 271 of this title with respect to any subject matter that would oth¬erwise infringe one or more claims for a method in the patent being asserted against a person, if such person had, acting in good faith, actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.
    (C) NOT A GENERAL LICENSE.— ….
    (4) BURDEN OF PROOF.— A person asserting the defense under this section shall have the burden of establishing the defense by clear and convincing evidence.
    (5) ABANDONMENT OF USE.— A person who has abandoned commercial use of subject matter may not rely on activities performed before the date of such abandonment …
    (6) PERSONAL DEFENSE.— The defense under this section may be asserted only by the person who performed the acts necessary to establish the defense and …
    (7) LIMITATION ON SITES.— …
    (8)UNSUCCESSFUL ASSERTION OF DEFENSE.— … the court shall find the case exceptional for the purpose of awarding attorney fees under section 285 of this title.
    (9)INVALIDITY.— A patent shall not be deemed to be invalid under section 102 or 103 of this title solely because a defense is raised or established under this section. “

  8. American Cowboy March 28, 2011 9:43 am

    In 100% of applications, currently, “first to invent” is the law, regardless of whether it is put to the test for that application or not. That situation colors how patent applicaitons are prepared and filed. Ftf would change that.

    If an inventor has already reduced to practice at the time when he/she first discloses the invention to his/her patent lawyer, under ftf, ANY delay by the attorney in filing risks losing rights that would not be lost when the law is fti. Thus, the attorney MUST FILE ASAP else he risks jeopardizing his/her client’s rights. No delay should be taken to allow a search to be conducted, or for consideration to be given to alternate embodiements or the appropriate scope to disclose, or even to check for typographical errrors in the first draft.

    The ftf folks will answer: “Well, just file a provisional and fix it later.” IPWatchdog often expounds on how quickie provisionals are hazardous. They don’t become less hazardous in an ftf world.

    So, we wind up with lots of quickie filings, clogging up the PTO, which is already overburdened.

    Also, a potential infringer looking at a patent based upon a chain of increasingly complete provisionals has a more complex and risky evaluation of patent validity. He has to make a judgment call on whether the claims of the issued patent is supported by which of the provisionals, to even know how to measure the effective filing date, to determine novelty.

  9. American Cowboy March 28, 2011 10:56 am

    I realize I did not complete my thought. As I said, in 100% of applications, currently, “first to invent” is the law, regardless of whether it is put to the test for that application or not. So, citing statistics of how many small entities won interferences or not is really irrelevant. The law is important to influence behavior during that period of time between invention and filing.

    Under fti, the inventor at least theoretically has his early date evidence to rely on, but if we go to ftf, then he does not and so for all cases he/she and associated attorney must rush to the PTO.

  10. Mark Nowotarski March 28, 2011 11:11 am

    “I then asked around to a number of colleagues and the consensus seems to be that 131 affidavits are filed in less than 1% of patent applications.”

    Gene,

    131 practice is alive and well in class 705 – business methods. As with many things patent related, you will find that certain practices are concentrated in certain art units. Those that file in those art units see them all the time. Those that don’t never see them.

    I think what makes 705 special in this case is that it is home to some of the fastest developing technologies in our economy, e.g. social networking and mobile phone apps. When things are happening fast, first to file versus first diligent inventor to invent makes a big difference.

    Mark

  11. Gene Quinn March 28, 2011 11:17 am

    American Cowboy-

    You need to keep your comments real. No straw man arguments are allowed.

    You say: “The ftf folks will answer: ‘Well, just file a provisional and fix it later.'”

    No one says that. Everyone knows you cannot “fix it later.” But that doesn’t mean you have to prepare a nonprovisional patent application and file it as a provisional either.

    You also say: “So, we wind up with lots of quickie filings, clogging up the PTO, which is already overburdened.”

    Not true. Provisional patent applications are not examined, so there would be absolutely no clogging.

    -Gene

  12. Gene Quinn March 28, 2011 11:22 am

    Scott-

    Interesting point on reexamination. Thanks.

    -Gene

  13. Gene Quinn March 28, 2011 11:25 am

    Gerard-

    You asked: Will an inventor loose rights to patent if the grace period expires before the capital is obtained to start the patent application process – even though every reasonable effort was taken to raise capital?

    Yes, but that is the case currently as well. That is why provisional patent applications are critical for many who need to test the waters and/or to try and raise capital. Competent provisional patent patent applications can be filed for less than the cost of a nonprovisional, we do it all the time. The filing of a provisional patent application stops the 102(b) clock from running.

    You also asked: In addition, does the USPTO use the provisional patent application database as a record of prior art?

    No. Provisional patent applications are maintained in secret.

  14. CAPat March 28, 2011 11:57 am

    My biggest concern with this patent reform effort is giving the PTO fee-setting authority. The Senate legislation permits the PTO to set fees as desired with the sole caveat being that overall fees collected cannot exceed the cost of services provided. This permits mischief to achieve policy goals, such as charging $10,000 to file an RCE or continuation. I believe the legislation should be amended to require that each fee not exceed the cost of providing the associated service.

  15. American Cowboy March 28, 2011 12:28 pm

    “Competent provisional patent patent applications can be filed for less than the cost of a nonprovisional, we do it all the time. ” I do too, but not on the day the inventor shows up at my door with his reduced to practice . widget. Maybe I am just old and feeble, but I can’t draft a competent provisional application in one day.

    Gene I fear your answer to this is incomplete: “You also asked: In addition, does the USPTO use the provisional patent application database as a record of prior art? No. Provisional patent applications are maintained in secret.” If a nonprovisional is filed that claims the benefit of the provisional, then the provisional is available for inspection on PAIR when the npa is published or issues. And the NPA is prior art as of the provisional’s filing date if it is supported by the provisional (which, of course is iffy).

  16. Steve Taylor March 28, 2011 1:21 pm

    Something to keep in mind on the first-to-file…the past may not be an indicator of the future.

    With first to file, a large entity (China, Google, IBM, etc.) can afford to file thousands of patents in any area of technology they believe is critical to the future. As an indicator that this is correct, China is already setting up many think-tanks across the US with the expressed intent to create patentable IP. If they do not have to worry about previous inventors, they can more easily swamp any area of technology. Try and challenge five thousand patents per month that are filed in your area of expertise.

    Please tell me why, as a small inventor (I hold 7 patents in UIs and I am currently working in Artificial Intelligence), that I should not be afraid of China, IBM and Google if this new law passes. They already have me out-gunned with the ability to request re-exam, set venue and drag cases out years. This law appears to me to give them additional bullets to shoot me with.

  17. American Cowboy March 28, 2011 1:52 pm

    Steve, I had not heard about the Chinese invent-tanks in the USA; please post a website link telling the details.

  18. Steve Taylor March 28, 2011 2:04 pm

    No website. This came directly from two sources. One a current LES member and another a senior licensing exec at Microsoft. I got this response when I jokingly threatened to do exactly that…approach China for funding! I am sure that many inventors feel like I do, if we can’t beat them…maybe we should join them.
    In spite of this, I continue hoping that the US wakes up to the threat it is creating. Here is one of my recent postings….

    New Patent Reform Bad for Small Businesses and America
    The new proposed patent reform bill that has recently passed the Senate is a bill for and by large companies. Anyone who is an inventor will tell you that the system was already stacked against them and about to get much worse if this legislation becomes law. The legislation is just a pawn of IBM and other large companies. See the excellent article by Carl Cooper: http://www.rgj.com/article/20110315/OPED04/103150317/-1/TT
    It is undeniable that small businesses have lost ground in Intellectual Property rights to large companies over the past few years. The current laws, specifically related to venue, cost-of-litigation and patent challenges place an unequal burden on small businesses. Even under existing law, small inventors and businesses cannot approach large corporations to simply license a patent for the fear of having to mount an expensive patent defense in some other part of the country (venue problem). Also, their patents can be effectively nullified for long periods of their lifetime by accepted requests for a re-exam.

    If the new reforms in Congress are passed, the additional changes will further dampen the incentive to patent new technology by small business. Getting a patent takes a large amount of time and money for a small inventor. In most cases, patent violators are almost impossible to identify. Simply put, small inventors already stand an extremely small chance of ever getting a return on their investments and inventions. Of all the patents applied for and granted (well over 30M), only 2200 cases a year start on the path of licensing. With the fear of re-exam and costly court battles, most cases are settled for very little money. This sad fact is the real cause of patent trolls. Inventors have little chance of getting any return on their patent as individual entities and must sell their patents to patent portfolio companies.

    With the new proposed legislation, Congress is moving towards triggering a larger threat to the competitiveness of the US on the world stage. If the new proposals on patent reform are adopted, we will enable large companies and countries to dominate future critical technological markets. With a “first-to-file” patent system and their tremendous trade surplus, China can allocate unequalled resources to any area of technology they deem important to the future. They will then file thousands of US patents in these targeted areas, unconcerned with potential prior inventors who have not patented their inventions. They may also challenge any new patent application by a US company or individual, swamping legitimate invention. This process has already started with China buying/starting many think tanks in the US.

    China will effectively own the most important industries of the future. The United States will have its own new patent system used against its vital interests. No business (except maybe Google, IBM and Microsoft) can effectively compete against a nation. Our lawmakers are strangling America yet again.

    We are watching the falling of America as the technology leader. The sad part is, China is licking its chops ready as soon as this bill passes to file thousands of US patents that totally disregard the original inventors. They have already set up shop in the US in many cities creating think tanks to file patents.
    “Patent Reform” / America Invents Act is good for IBM and Multi-Nationals. It is bad for Small Entities, Independent Inventors and America.
    Attached are links to some realistic evaluations of the “Patent Reform” legislation. The America Invents Act is bad for American.
    http://www.huffingtonpost.com/gary-lauder/patently-absurd-or-how-to_b_832703.html
    http://docs.piausa.org/
    http://bit.ly/fG82nt
    http://huff.to/gZ56fd
    http://bit.ly/gQCzTE

    Steve

  19. Lawrence S. Cohen March 28, 2011 2:10 pm

    Mr. Quinn has written a useful discourse although one has to ignore his common practice of negatively characterizing people who hold opposed views. He did not consult me even though he is aware of my previous comments.

    As for the merits of the situation.
    The first point is that first to invent recognizes the most important merit of the invention system, which is the first to invent is the person who should have the patent. It is the jewel in the crown of our patent system recognizing the basic measure of merit on which our patent system has functioned. On the other hand there is no merit to first to file, except of course bureaucratic convenience. In other areas the US takes a high road on principle vs other countries, why not here too.
    As for the utility of first to invent, we who oppose the change never postured that actual contesting of who invented first is the issue. That contest, the interference, is so miniscule in our system that it doesn’t represent the real issue. The real issue is the 131 affidavit.
    As I have previously reported, in my practice about 25% of cases do get the opportunity for an affidavit swearing behind a reference. But there is more to this picture. Examiners always try to find references more than a year old so as to invoke the 102(b) rejection. So, the rule is silently functional. And then, patents get issued. We don’t know how many patents got issued because the searching omitted the one year period. Yes, it is true that if you do a 131 affidavit the examiner will go back to searching to find reference that is early enough, and then still, many patents issue. Also, we don’t want to file a 131 affidavit if we can get reasonable patent coverage without it. Why, because the 131 affidavit is a concession that the reference does what the examiner says it does (for anticipation or obviousness). Consequently, if in a licensing or litigation, or sale of assets situation, a reference of similar content is found, but too early to swear behind, that concession hits and the patent losses its value. For that reason we always argue around a reference and only swear behind it if no other course is available. In this we keep in mind that the examination process is very much a matter of the client making compromises in the scope of the patent. So first to invent has, as it should, considerable impact beyond just filing a 131 affidavit. I return to the basic premise that first to invent is the measure of merit of the patent system. So first to invent should have considerable impact on how the system works.
    Study of the full extent of the “reform” legislation does reveal that it is the big players (except for big pharma) who will benefit by these changes and that is its goal. But this as well as the Supreme Court is a swing of the pendulum from a pro-patent era to an anti-patent era. I have seen it before, so it causes me less discomfort than it might otherwise.
    As I see how our law making system works , the lobbyist take his client’s interests and creates a list of bullet points for legislation that will satisfy those interests, but they are not really disclosed as the special interest that they are, instead they are stated in high sounding and rational terms, which in fact aren’t true or are at least misleading. Then the legislators read the bullet points and adopt them. Certainly, no senator or congressman is going to get into the debate about 131 affidavits, they reach for a higher statement of principle, which of course brings us back to the bullet points.

  20. American Cowboy March 28, 2011 2:31 pm

    “Why, because the 131 affidavit is a concession that the reference does what the examiner says it does (for anticipation or obviousness)”

    Professor Kayton used to teach this and made swearing behind sound like the last refuge of a scoundrel. However, I see no reason why there is an inference that the applicant is making such a concession. Given the way that the courts hold everything you say in arguments to the examiner against you (i.e. in an adverse claim construction or equivalents analysis or what the court calls subject matter disclaimers), swearing behind can be more attractive than arguing for novelty or non-obviousness on the merits.

    Is there caselaw that says this amounts to an admission that the reference has the disclosure necessary to support the examiner’s 102 or 103 rejection? I am not aware of any.

  21. Steve Taylor March 28, 2011 2:35 pm

    Trying to get my comment in again…

    No current website data available on China related think-tanks.
    Conversations with multiple people at LES & Microsoft.

  22. Robert K S March 28, 2011 4:01 pm

    Suppose Congress was trying to pass legislation that would procedurally block an innocent convict from being released.

    Suppose supporters of the law employed in their cause a statistic that in the last 7 years, only one innocent convict’s appeal was ever successful.

    By Gene’s logic, the rarity of an innocent defendant being freed would justify Congress’s new law barring any future innocent convicts from winning liberty.

    RKS

  23. Gene Quinn March 28, 2011 4:48 pm

    Robert K S-

    Are you always so intellectually dishonest? Why must you demagogue the issue? Are you afraid of actually debating the merits?

    You are PATHETIC.

    -Gene

  24. David Boundy March 28, 2011 4:58 pm

    Gene —

    How many deals have you signed up for startup financing? How many representing the company, and how many on behalf of the investor?

    And how many startup financing deals have you advised on that tanked? How many for the company, and how many for the investor?

    And how often have you advised the company as quasi general counsel, on all business issues from patents to financing to contracting to…

  25. Jordan March 28, 2011 5:17 pm

    Is a first-to-file system constitutional?

    Article 1, Section 8, Clause 8 of the Constitution states empowers Congress “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.”

    Is someone who invents second but files first really an “inventor” within the meaning of the Constitution?

  26. David Boundy March 28, 2011 5:33 pm

    Gene’s last paragraph hits the nail on the head: “I think those that are against first to file are really most worked up about the loss of the across the board grace period for the statutory bar. Today there is a grace period that applies to both inventor and third party activities.”

    Your “ask,” that we talk about the grace period and not first to file, is absolutely correct. When we are not careful with our vocabulary, we don’t communicate clearly.

    It’s all an issue of cost and risk balancing. As you note, under current law, reliance on the 102(a) and (b) grace period is not common. But it’s there as a fallback, and the existence of that fallback changes a huge amount of behavior.

  27. CAPat March 28, 2011 5:44 pm

    Here is another problem with the proposed first inventor to file approach, pointed out by Hal Wegner:

    To be clear, the issue arises when Inventor-A files a patent application and then, a few months later, Inventor-B files a patent application claiming a similar (but different) invention. It is usually the case that (1) Inventor-A will not immediately publicize its invention and (2) the first-filed application will not be published until 18-months after its filing. Under the proposed system, Inventor-B’s patent could be blocked on obviousness grounds based on Inventor-A’s application. In Europe and Japan, however, the earlier filed application would not be used in the obviousness (inventive step) analysis unless published prior to Inventor-B’s application date.

    Thus, under our current invention-date-focused system, some inventions are patentable in the US that would not be patentable in Europe and Japan. On the flip-side, once the bill is passed, there will be a new set of inventions that are patentable in Europe and Japan, but not patentable in the US.

    If we are going to move toward a first-to-file system, for the purposes of harmonization with world patent practice, then we should also eliminate the idea that prior patent applications are prior art as of their filing, rather than publication date. We should not disadvantage our inventors respective to those in the rest of the world.

  28. Gene Quinn March 28, 2011 6:55 pm

    David-

    How often is the sky falling in your world?

    If you really want to go down this path we can, but it won’t be pretty. So up to you my friend. If you want to pick a fight then go ahead and pick the fight.

    -Gene

  29. Gerard Peregrin March 28, 2011 8:18 pm

    Why don’t the legal minds in here propose a solution to the apparent differences of opinions? For example, I was told that the provisional patent database is not treated as prior art in part because the provisionals are kept secret. Well, why not provide the inventor with an option to lift the secrecy on the provisional so that he can make the claims available to interested parties and maintain the right to patent even if the grace period expires and disclosure occurs? Why not treat the grace period as indefinite and allow the inventor to maintain the right to patent as long as the inventor acts in good faith to bring the invention to market? Wouldn’t this strategy be constitutional and yet allow the Congress to encourage commerce based on invention? If disclosure occurs – so what – the provisional could be a record of the original inventor and his/her claims. Perhaps we should consider how we can adapt our behaviors/systems while maintaining our constitutional protections to our property as we introduce innovations based on ideas that can provide commercial benefits to all. Just a minor point here. Crowdsourcing is increasing, web-sites are emerging which invite entrepreneurs to present their business plans and disclose their innovations. An entrepreneur could attract capital and labor if he/she could publish without loss of rights. Let’s protect them with the virtual FBI and provide them with every opportunity to publish without loss of property rights so that they can turn their intellectual property into social benefits.

  30. Lawrence S. Cohen March 28, 2011 8:23 pm

    American Cowboy,
    My position about the 131 affidavit acting as concession means that if, later, say in litigation, a reference is cited that has the same content but is too early for a 131, then you have conceded that the examiner’s position is correct, or maybe you’re estopped from denying it. But, after your comment I have done some research and I can find no support for my position, so to all attendees please accept my apology, and I withdraw that point.

    The point made by CAPat is very interesting. Even more simply, how will the examiners be able to cite an earlier filed application. They will have to search for it, or maybe the PTO will disregard the rule for examination purposes and it will apply in litigation. Often we file a request for non-publication, and don’t file foreign, so the application stays under cover for a long time, but even 18 months is quite a long time, unless all applications will be publicly available at the time of filing.

    I would welcome some insight into this point.

  31. American Cowboy March 29, 2011 9:12 am

    Gerard Peregrin makes an interesting point about the role of the internet and crowdsourcing on start-up organization and financing. I say interesting because it reminds me that many of the modes of thinking about stuff that the bar generally debates are based upon pre-internet technology. This whole fit/ftf debate has raged for decades, starting long before the internet allowed information dissemination to be global in a heartbeat.

    I am not advocating for any particular position in this post. Rather maybe we should all stop and consider what it is we are trying to encourage and discourage in inventor/investor/competitor/general public behavior and how whatever those goals may be are best served in an internet-enabled society. I don’t have the answer here and now.

  32. Robert K S March 29, 2011 3:45 pm

    Gene,

    I brought up a legal scenario that is fully analogous to your argument. To counter it, you could show how your approach is distinguishable from my scenario.

    Or, you could resort to calling me dishonest and pathetic.

    One will work to persuade myself and others; one will not. One will increase your reputation and esteem; one will diminish it.

    I am a visitor to your web site who is trying to present opposing viewpoints, since you seem to have stopped treating them in your journalism, which is increasingly polemic. If you want your web site to be the “top dog”, it will provide balanced perspective, something I believe you to be capable of even without sacrificing your personal positions on matters. If, on the other hand, you insult or ignore those who disagree with you, my guess is that you risk your web site eventually coming to be viewed as just one among many where bloggers spew their rants.

    Best,
    Robert K S

  33. Gene Quinn March 29, 2011 10:51 pm

    Robert K S –

    The fact that you would even suggest that an innocent person being jailed is “fully analogous” to a change in the patent laws that WILL result in modified behavior is asinine.

    You are one of the most intellectually dishonest individuals I have ever encountered.

    My reputation and esteem need no improving. You hide who you are and make ridiculous, pathetic arguments that I am supposed to take seriously? Why not tell us who you really are so everyone can see the brilliant mind that thinks patent law and an innocent person being wrongfully jailed are “fully analogous.”

    -Gene

  34. Robert K S March 30, 2011 4:37 pm

    “The fact that you would even suggest that an innocent person being jailed is ‘fully analogous’ to a change in the patent laws that WILL result in modified behavior is asinine.”

    They are analogous in that they both involve unjust loss of rights. A convict loses rights of freedom following conviction. I think most reasonable people can agree that an innocent criminal defendant who, after conviction, can be exonerated by exculpatory evidence should procedurally be given the opportunity to prove his innocence. In analogous fashion, an applicant for patent under either a first-to-file or first-to-invent scheme is “found guilty”–deprived of patent rights–if he is beaten to the patent office by an anticipatory filing. But under first-to-invent, he can present “exculpatory evidence”–a 1.131 affidavit with accompanying documentation–so long as he really is the deserving (earlier) inventor and filed within the statutory grace period.

    A way in which it is not analogous, and the only way I can see, is that under the Constitution men are born free with all the rights and liberties it affords them, and only have those freedoms taken away from them by the government, whereas there is no intellectual property right under the Constitution or common law, but patents are granted by the government pursuant to statute. Even so, the sequence of grant/revoke is immaterial to the point I am making, which is that first-to-file has an inherent unfairness about it which should bother any who favors justice. It is the replacement of an evidence-based rule with a bright-line statutory rule for no good reason other than simplification.

    But the overarching trend of law is not one of simplification, because simple laws are less deft of handling complex situations. Simple laws are inartful, and by and large evolve to become artful–more complex, more sophisticated, more adaptable, more flexible, and inevitably, more fair–through legislative amendment and judicial interpretation over time, resulting in better legal doctrines. Viewed in this light, patent reform presents a serious case of devolution. When I was learning patent law, the procedural process that allowed an applicant to “recover” rights–to “exhonerate” himself, as it were–made so much sense to me. I felt they were “right”–fairer, juster than a “sorry, you’re SOL, go away” statute.

    I don’t know why you keep amping up the “intellectual dishonesty” hyperbole, but I suspect ever more it’s because you’re not interested in addressing this argument or any other that opposes your opinion. You have your soapbox, and any who approach it with challenges are going to get your squirt gun rather than your intellectual energy.

    Robert K S

  35. Gene Quinn March 30, 2011 5:02 pm

    Robert K S-

    They are not at all analogous, and I can’t understand why someone versed in the law wouldn’t understand that saying that comparing personal freedom and patent rights is anything other than intellectually dishonest.

    There are times in the law when arriving at the right decision matters because absent the right decision parties are unable to change their behavior and rights are not capable of being efficiently and appropriately allocated. For example, it doesn’t matter who bears the burden of loss for fire after you enter into a purchase and sale agreement to buy a house. All that matters is the law be clear. If it is the buyer then the buyer gets insurance to cover the loss, if it is the seller then the seller gets the insurance. So clearly defined law is all that matters.

    When a person’s personal freedom is on the line getting things correct matters in 100 out of 100 cases, which should be self evident. Allocate the rights inappropriately and innocent people go to jail, which is unacceptable.

    I observed that 1 out of 3,000,000 independent inventors benefit from participating in an interference proceeding, and almost no one files 131 affidavits. Furthermore, once you settle the law everyone will know what the law is and modify their behavior. Therefore, there doesn’t need to be as much concern about getting the rule correct because behavior will be modified and individuals will be able to order their affairs according to the new law. Notice, that a law that innocent people go to jail doesn’t allow for such modification of behavior in a way that would matter.

    So noticing that 1 out of 3,000,000 is a non-problem is NOT at all analogous to me saying that innocent people should rot in jail, as you suggested. You put words in my mouth, your position is and was absurd and it is and was intellectually dishonest.

    Finally, you tell me that I am not interested in exerting intellectual energy and prefer getting on a soapbox is truly ridiculous. You hide behind anonymity and you take ridiculous, absurd positions that are intellectually dishonest on their face, yet you question my intellectual energy? If you are really the one who is righteous and your position is so learned why not out yourself so everyone can know who the brilliant individual is that thinks first to file is equivalent to putting an innocent person in jail forever. Why not take ownership of your enlightened view?

    -Gene

  36. tom gallagher March 30, 2011 5:32 pm

    So if the first to invent rule only affects 1 in 3 million, why do we need to change it? Just to look more european?

  37. American Cowboy March 31, 2011 9:11 am

    Gene, you say that “once you settle the law everyone will know what the law is and modify their behavior. Therefore, there doesn’t need to be as much concern about getting the rule correct because behavior will be modified and individuals will be able to order their affairs according to the new law.”

    I disagree with the assertion that “everyone will know the law.” I don’t thing first time inventors will have a clue about that.

    As to the need to modify behavior, you are touching on my point in prior posts. We attorneys will need to modify our behavior, since a client who comes to see us to disclose an invention that is reduced to practice has put upon the attorney the burden to rush to file the patent application. His right to a patent is jeopardized by every day of delay that the attorney causes. So the attorney MUST modify his behavior and file immediately upon receiving the disclosure. I don’t think that is good for clients, attorneys, the patent office or the general public.

  38. Gene Quinn March 31, 2011 12:09 pm

    AC-

    You say: “I disagree with the assertion that “everyone will know the law.” I don’t thing first time inventors will have a clue about that.”

    Well right now we know that first time inventors, seasoned inventors, business people and at least some patent professionals don’t really understand first to invent. Everyone wants to portray it as easy to prevail as the second to file and that is simply a fantasy. First inventor to file is far easier to understand.

    As far as rushing to filing a patent application, that is not true. You need to rush to publish something. If the inventor publishes his own publication cannot be used as prior art against him and would effectively cut off third parties from obtaining patent protection on what is published. The inventor has 12 months to file a provisional and then another 12 months to file a nonprovisional. So the first to file provisions are essentially providing more benefit to the inventor by the opportunity to establish rights through publication and then giving 12 months before a provisional needs to be filed and 24 months before a nonprovisional needs to be filed.

    -Gene

  39. tom gallagher March 31, 2011 12:29 pm

    But Gene, once you publish, without having an application on file, don’t you lose all foreign rights?

  40. CAPat March 31, 2011 12:46 pm

    The real problem is not the loss of foreign rights, which are already under a first-to-file regime in almost all other countries/regions. The real problem is that self-publication does not foreclose third parties from also publishing and/or publicly using the invention. Even though they would not be able to patent because of your prior publication, their publication/public use would still prevent you from patenting. So self-publication does not permit you the luxury of leisurely waiting 12 months to file. If anything, because you have now put the knowledge into the public domain, it hastens the need to file quickly before someone else does something with it.

  41. CAPat March 31, 2011 12:54 pm

    I think that small inventors are going to have to acknowledge that first-to-invent is not going to be around much longer, and that it really doesn’t help much anyway, because of the difficulty of winning an interference as a junior party. We really need to focus on two changes to the Senate reform bill: 1) eliminate “secret” prior art, i.e. the U.S. practice of according prior art effect to U.S. patents and published applications as of their filing date, rather than publication date; and 2) ensure that PTO fee setting authority is limited to recovering actual service costs for EACH service, rather than as a whole. Otherwise, we will see the potential for outrageous pricing levels for services the PTO does not want to provide, such as continuations and RCE’s. They will “backdoor” the restrictions they wanted to place on these inventor rights by regulation a few years ago.

    I represent a lot of small inventors and start-ups. For years, I have advised them to file quickly, understanding that the first inventor right is illusory. If we get the above changes, we can otherwise live with the first inventor to file reform. If we don’t, we will rue the day, and will see an acceleration of the demise of value of the patent right.

  42. American Cowboy March 31, 2011 1:03 pm

    “As far as rushing to filing a patent application, that is not true. You need to rush to publish something. If the inventor publishes his own publication cannot be used as prior art against him and would effectively cut off third parties from obtaining patent protection on what is published. The inventor has 12 months to file a provisional and then another 12 months to file a nonprovisional. So the first to file provisions are essentially providing more benefit to the inventor by the opportunity to establish rights through publication and then giving 12 months before a provisional needs to be filed and 24 months before a nonprovisional needs to be filed.”

    Gene, your strategy of publishing and then waiting 11.9 months to file a provisional, etc. is a new one for me. Others have indicated some risks involved in that, including the immediate, sure loss of foreign rights. I would add that that strategy negates the option of keeping the invention as a trade secret if the ultimately allowed claims turn out to be too narrow to be of value. These risks strike me as being so great that it would be a very unusual case when I would recommend that strategy to a client.

    Why can’t we keep the status quo? I don’t want to be like the French.

  43. Gene Quinn March 31, 2011 1:04 pm

    Tom-

    Yes, I suppose you would lose all foreign filing rights. Good point.

    So this strategy would work well for independent inventors who are rarely have the financing necessary to even consider foreign rights. It would also work for those small businesses and start-ups that couldn’t get much, if any, useful patent protection outside the U.S. So it would work for software and much (but not all) in the life sciences area.

    -Gene

  44. Gene Quinn March 31, 2011 1:07 pm

    CAPat-

    You say: “because you have now put the knowledge into the public domain…”

    Let’s explore that a bit. It would seem to me under the law relative to what is a publication it could be a publication and for all intents and purposes be unfindable in any real, honest sense. The cases dealing with a thesis say that a single thesis accessible in the shelves of a single library (and not even available online) would suffice to be a publication. I could see a lot of gaming here.

    Is there a case yet that has held that publication on the Internet is considered a publication for 102(a) or 102(b)? I can’t imagine it wouldn’t be, but is there actually a case that says that definitively now?

    -Gene

  45. IANAE March 31, 2011 1:49 pm

    2) ensure that PTO fee setting authority is limited to recovering actual service costs for EACH service, rather than as a whole.

    $20 for the third maintenance fee? Yes, please.

  46. CAPat March 31, 2011 2:00 pm

    Gene @ 44: I get your point, which is that you can publish in something sufficiently obscure that it is unlikely to actually be seen so that you are not at a substantially increased risk of having stimulated activity in the market by your publication. Fair enough, but that doesn’t address the larger issue, which is that your first publication only prevents others from patenting. It doesn’t innoculate you from intervening third party activity which would also prevent you from patenting. So, you cannot safely wait 12 months to file if you want to be assured of having the opportunity to obtain patent rights.

    IANAE @ 45: Do you have anything substantive to add? Do you see the problem with S. 23, in giving the PTO the right to set fees pretty much as it pleases, given its past history?

  47. IANAE March 31, 2011 2:23 pm

    Do you have anything substantive to add?

    I thought my point was clear enough. A full correlation between individual fees and the cost of individual services would never work, because the PTO needs some fees to be set much higher than cost. Maintenance fees cost the PTO almost nothing to process, but there are important public policy reasons for them to be as high as they are, and they subsidize a third of the PTO’s entire operation. If the PTO can’t turn a profit on maintenance fees, they might as well be abolished.

    Under your proposal, the PTO would have no choice but to set every fee equal the full cost of every single service provided, because that would be both the maximum under the statute and the minimum to avoid running a deficit. That means filing fees equal to the current Tier 1 fee, similar fee levels for RCEs and continuations, some obscene cost for filing an appeal brief, and no small entity discounts.

    That’s why it’s perfectly fine for the PTO to set its fees in a discretionary manner such that, in the aggregate, its collections correspond to its costs. Unless you think some fees are more “worthy” than others of being set above cost, but you’d need a good reason why RCEs couldn’t be one of those.

    Besides, I’m sure the Federal Circuit would make short work of a $10k fee for RCEs.

  48. CAPat March 31, 2011 2:30 pm

    IANAE — the statutory purpose of maintenance fees is to permit successful patentees to subsidize the application processing of the Office. It’s easy enough to design a statute to permit the PTO to set fees while retaining the overall proportionality of them compared to the whole. What you do not want is to have to rush to the Federal Circuit because some commissioner decides he doesn’t like RCE’s and attempts to zero them out with outrageous fees. He shouldn’t have that much discretion.

    And if you have given the PTO statutory authority to set fees, as long as they, in the aggregate, do not exceed the costs of providing services, in the aggregate, how can you be so sure the Fed Cir will “make short work of a $10k fee for RCE’s”?

  49. inventor0875 March 31, 2011 3:29 pm

    Gene, I am concerned with of impacts of: “You need to rush to publish something. If the inventor publishes his own publication cannot be used as prior art against him and would effectively cut off third parties from obtaining patent protection on what is published.”

    The proposed wording of the Grace Period in 102b(1) seems intended to protect the narrow scenario of academic publication (probably from the University lobby?). But, an appropriate Grace Period is still missing from the legislation.

    Encouraging start-ups to publish their conceptions to the world (China) soon after conception, in-order to obtain a Grace Period will be detrimental. First is the immediate loss of foreign patents. Second is the negative impact on start-up strategy.

    Ideally, start-ups attempt to maintain absolute secrecy prior to market launch, in-order to obtain stealth and first mover advantages. But in the real world, start-ups may suffer some loss of secrecy, since their limited resources require more activities with outside parties (funding, partnering, prototyping, etc) where unfortunate/unwanted disclosure(s) may happen to occur.

    Often, these unfortunate disclosures do not significantly compromise the first mover advantages, because competitors do not initially become aware of them or their significance. While much later (in hindsight), the disclosures may be quite apparent.

    The current U.S. Grace Period encourages activities that advance inventions to market [so society will benefit], by tolerating unfortunate disclosure(s) and still allowing inventors to obtain their patents. Because an unfortunate disclosure is not fatal to obtaining patent(s) in the U.S., start-ups can take more calculated risks to aggressively advance the invention to market (innovation happens faster).

    But notice that, while the current U.S. Grace Period tolerates such unfortunate disclosures, it does not hurt start-ups by requiring/encouraging publication to obtain their Grace period.

    We can have both First-to-File and a Grace Period that is similar to today’s (where inventors aren’t required to announce/publish their concept to the world).

    Reword the proposed 102b(1) so that the Inventor-Applicant would need to be first-to-file a patent application (PPA or NPA), but would only need to prove that they “conceived” of the invention, before Applicant/third-party prior-art/activities that occurred during the one year grace period. [If the Applicant proves conception before third-party prior-art/disclosure/activities, then the Applicant did not “derive” from them.] This is simpler for Applicants to prove and the USPTO/Courts to verify.

    We also need to the Rest of the World to adopt a grace period that will stop the rip-off of U.S. inventions that are considered not patentable by the Rest of the World, because of typical inventor activities that advance an invention to market.

    Gene, if possible please write several articles that analyze the flaws in the wording of the proposed grace period and suggest the needed rewording. Both First-to-File and a well designed Grace Period are simultaneously possible.

  50. Robert K S March 31, 2011 3:57 pm

    Gene,

    I don’t think you would have used such offensive language if my argument hadn’t in some way struck you as having merit. That which is easily dismissable is easily dismissed. But you you took the time not only to reply to me, but to insult me.

    My posts here are no more anonymous than yours are. Anyone who wants to know who I am can Google my name, just as they could yours.

    As to the substance of your argument, I disagree (as was established previously), except insofar as your argument aligns with what I already stipulated. Inventors should be given the procedural opportunity to establish inventorship, and patent reform strips them of that opportunity.

    The most significant thing you said was “almost no one files 131 affidavits”–in other words, there are people who justly file Rule 131 affidavits and justly win priority based on them. If your argument is that the law should neglect a rarity, that is what is absurd. By proportion of the total population, “almost no one” files for patents, but you are not arguing that we repeal the whole Patent Act.

    Maybe it’s a Constitutional issue–we’ll find out, I am sure, within a few years after this bill is passed into law, if it does.

    RKS

  51. Gene Quinn March 31, 2011 7:28 pm

    Robert K S-

    You write: “I don’t think you would have used such offensive language if my argument hadn’t in some way struck you as having merit.”

    Think again. I’m from New Jersey. My responses have been toned down enormously. My outrage was as a result of you putting words in my mouth. If you are going to do that at least get it right. You put words in my mouth that you knew or should have known had nothing to do with what I wrote. You tried the oldest, worst debate trick in the book. Claim your opponent believes something ridiculous and marginalize them. In so doing it was YOU who equated an innocent person going to jail, perhaps for the rest of their lives, to the alleged injustice first to file would impose on inventors. And you think my statements are absurd? Your statements have been truly ridiculous on a different level.

    You write: “Anyone who wants to know who I am can Google my name…”

    I guess the fact that we won’t be able to know who you are by initials doesn’t make you anonymous? I did Google Robert K S and as it turns out your identity remains hidden. I’m sure I could figure out who you are, but claiming that using your first name and initials makes you as known as me is yet another in a long line of ridiculous statements by you. Why not tell us and stand behind your statements like I stand behind every statement I make.

    You write: “If your argument is that the law should neglect a rarity, that is what is absurd.”

    Obviously, that is not what I said. It is rare so the fact that the law changes means it affects few if any. So in the face of something more efficient that impacts so few why wouldn’t we change? That isn’t absurd, it is common sense. Additionally, once the law changes everyone starts to behave differently and in accordance with the new law, which for reasons unknown you seem to not understand or completely discount.

    -Gene

  52. Gene Quinn March 31, 2011 7:31 pm

    CAPat-

    You say: “It doesn’t innoculate you from intervening third party activity which would also prevent you from patenting.”

    Why is that the case? I’m not sure I agree. I’m not sure I disagree either. Just trying to wrap my head around what you see.

    Thanks.

    -Gene

  53. CAPat April 1, 2011 1:01 am

    Gene @ 52: Fair enough question. I have reproduced proposed Section 102(a) of the S.23 bill below. 102(b), as proposed, includes the aforementioned exception for public disclosures by the inventor:

    102 (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
    “(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or
    otherwise available to the public before the effective filing date of the claimed invention;”

    So, under your scenario, an inventor could publish his invention obscurely, perhaps as a thesis or the like, so that it meets the statutory definition of a public disclosure but is unlikely to become known to competitors. This publication falls within the exclusion to prior art set forth in 102(b), so, though it triggers the statutory bar of 102(a), that bar is tolled for a one year grace period, for the inventor himself. All third parties are immediately barred from seeking patent protection for the disclosed subject matter. I think we agree to this point.

    Now, above @ 38, you indicated that the inventor could now sit back and take the 12 month grace period to prepare and file his application, provisional or otherwise. My point is that, while this is legally true, it is only true as long as no other third parties publish or otherwise publicly use the same or similar information. Even if your publication is sufficiently obscure that no one is likely to find and rely on it, you and I both know, having worked in the patent field for a long time, that worthwhile inventions are almost always being pursued nearly simultaneously by competitors. If one of them goes public during that 12 months, you are immediately dead under 102(a) above.

    So, the difference is that, under first-to-invent (current law), that later third party publication doesn’t prevent you from obtaining patent protection, as long as you were truly the first inventor, were diligent, and can prove it. Under first inventor to file, not so.

    The bottom line is that I always advise my clients, no matter how small, to get something filed ASAP. Even under the current law, and obviously if they have any interest in foreign patents. Under first inventor to file, that advice will be even more urgent.

  54. American Cowboy April 1, 2011 9:28 am

    Gene said: “It is rare so the fact that the law changes means it affects few if any. So in the face of something more efficient that impacts so few why wouldn’t we change? That isn’t absurd, it is common sense. Additionally, once the law changes everyone starts to behave differently.”

    Gene, I fear you are inconsistent here; since everyone behaves differently, the change in the law affects everyone, not just a few. And my point made several times above is that the requied change comes down hard on the patent attorneys. Any delay between receiving the client’s invention disclosure and obtaining a filing date raises the attorney’s malpractice risk. That is the self-serving view, I admit.

    It is also bad for the inventor, because he has to pay for the attorney to rush to get an application filed, and perhaps a series of provisionals, as new embodiments are worked out, new claims considered in light of an after-filing search, etc.

    It is also bad for the PTO because they have more applications to keep track of. Yes, they don’t examine provisionals, but they do need to maintain them and the linkages between them. When the non-provisional gets examined and the applicant claims the benefit of the provisionals to antedate a cited reference, the series of provisionals must be scrutinized to see how early in the chain the claim at issue is supported. Same issue for an alleged infringer seeking to challenge validity.

  55. Gene Quinn April 1, 2011 12:25 pm

    AC-

    You say: “Any delay between receiving the client’s invention disclosure and obtaining a filing date raises the attorney’s malpractice risk.”

    I disagree. Sure, you will have to change your representation agreement, but if your client cannot provide quality information quickly enough to take what they provide and file a quick provisional patent application then the truth is they didn’t have an invention anyway.

    Let’s just say what we all know. In truth the clients are rarely the inventors. The inventors are the patent attorneys who take that cryptic notes of the inventor who refuses to cooperate because they are too important. We use those cryptic notes and the results of a patent search to identify available space and then create the invention to fit into that space. I’d say that easily in 50% or more of cases the inventor has invented nothing, or at least they haven’t articulated anything. That is the trouble with big corporations who can’t possibly get more than one cryptic paragraph out of an inventor.

    So you are right in your assessment if you are one of those who is pathologically afraid of provisional patent applications. I understand why people don’t like them, but that isn’t because they can’t or won’t work, it is because the client hasn’t come up with anything until you create the nonprovisional patent application. That is on the client, and definitely not a malpractice issue.

    This very problem is why I created the Invent & Patent System to collect as much information as possible from the inventor. I have them go through the system to submit answers prior to doing the search and then after the search is done. If the inventors are not willing to participate and expect patent attorneys to invent then for those there will likely be real problems.

    -Gene

  56. Gene Quinn April 1, 2011 12:26 pm

    By the way… if any attorneys are interested in using the Invent & Patent System with your clients please let me know.

    http://ipwatchdog.com/patent/invent-patent-system/

    -Gene

  57. American Cowboy April 1, 2011 1:11 pm

    I assume you have great way to get the info down in a useable form with your Invent & Patent System, but I assume that still requires some attorney involvement. If you are busy at your kid’s soccer game or drafting an urgent motion for preliminary injunction for another client, groggy with a hangover, … whatever instead of getting that miracle done and filed, then you are at risk.

  58. Gene Quinn April 1, 2011 2:12 pm

    AC-

    You are at risk only if you allow yourself to be at risk. If you choose not to let clients know of the wait times and get them to accept them then that would seem to be on you. If you disclose information to the clients and hit your targets then it is on the client, not you.

    With the soccer game example I get the sense that you think it will be malpractice to not file it the second that your client provides the disclosure. I think that is so far fetched as to not be realistic. How many minutes or seconds after it is give to you do you have in your view not be have committed malpractice? How many minutes or seconds do you have not to even worry about malpractice issues?

    -Gene

  59. American Cowboy April 1, 2011 3:45 pm

    Since patent offices don’t cut the priority measurements closer than days, certainly minutes and seconds would not matter unless they cross over midnight, but I ought to be asleep then. Heck I don’t think it’s malpractice to wait for a few weeks, but I am not plaintiff’s counsel in that lawsuit, nor the judge nor the jury, and frankly I am making my judgment based upon my experience with fti as the rule. Who knows what the “reasonable attorney” standard will be in a ftf world.

    The point is, the client who lost will be looking for someone to make him whole. If you delayed doing other things when you could have been filing his case and thereby avoiding his loss, he is not gonna be happy with you and may be looking for plaintiff’s counsel to make you pay.

  60. tom gallagher April 1, 2011 3:50 pm

    So if I understand Gene, the attorney should file the inventor’s disclosure as a provisional before working with the inventor to get a proper disclosure?

  61. tom gallagher April 1, 2011 4:05 pm

    Urban Legends? Or just bad info from Legal Zoom?

    http://www.legalzoom.com/intellectual-property-rights/patents/inventors-who-lost-race

  62. Gene Quinn April 1, 2011 4:44 pm

    Tom-

    You say: “So if I understand Gene, the attorney should file the inventor’s disclosure as a provisional before working with the inventor to get a proper disclosure?”

    First, we both know that isn’t what I said. So if you respond I would love to hear why you felt it necessary to so grossly misrepresent what I said.

    Second, as a patent attorney I would expect you to understand that filing any patent application without an adequate disclosure is useless, as I have written on many occasions. Most recently here:

    http://ipwatchdog.com/2011/03/19/tricks-tips-for-describing-an-invention-in-a-patent-application/id=15823/

    Third, the conversation was dealing with malpractice, which is when someone sues you because you have deviated from the standard of care. Filing a patent application within minutes, or even hours or days, is not the standard in the industry.

    Fourth, the fact that I have derived a way to collect useful information from inventors is no reason to try and belittle me, my advice or my system. The fact that you get garbage from clients that needs a lot of your time is not my problem. It probably means you have been filing patent applications for years where you are the inventor anyway. Have you listed yourself as the inventor when you get those cryptic disclosures that make no sense and then with no help from the inventor blow them out into an application? You do realize the if you contribute conception you need to be an inventor.

    Finally, what really irks me is when someone who should know better, like you, seems to intentionally and in a ridiculous fashion mischaracterizes what I write.

    -Gene

  63. Gene Quinn April 1, 2011 4:46 pm

    AC-

    You say: “The point is, the client who lost will be looking for someone to make him whole. If you delayed doing other things when you could have been filing his case and thereby avoiding his loss, he is not gonna be happy with you and may be looking for plaintiff’s counsel to make you pay.”

    And that is why you need to revise your agreements. If you choose to continue not to have the appropriate agreements defining your representation and setting expectations then I guess you probably will get sued if there is a bad outcome. Again, I see the choice being yours.

    -Gene

  64. tom gallagher April 1, 2011 4:54 pm

    Gene,

    I did not mean to belittle you in any way. I apologize if my remarks came across that way.

    I am just trying to get an idea about how you propose that patent attorneys should change their procedures if first to file gets adopted.

    I am expecting that first to file may be good for business, getting people to file sooner rather than later, but there seems to be a real malpractice issue and I don’t fully understand how you addressed that.

    All the best,

    Tom

  65. tom gallagher April 1, 2011 5:01 pm

    Gene,

    Perhaps you are saying that my retainer letter should say that I can’t file anything until I get a good complete disclosure and then it will take a month? I think we need a better solution than some retainer letter language. If you represent the first inventor who is not the first to file, and there is a colorable argument that your delay was the reason, you are getting sued regardless of retainer letter language.

    All the best,

    Tom

  66. Gene Quinn April 1, 2011 7:27 pm

    Tom-

    If your representation agreement explains when the application can be expected to be filed and the client accepts that time table there could be no malpractice lawsuit if the time table is met. A lawsuit filed by the client would be frivolous.

    -Gene

  67. tom gallagher April 1, 2011 7:31 pm

    Thanks for clarifying, Gene. BUT, I think there is still room for discussion on this and that telling a client it will take a month might not be enough.

    And since I am typing, why are we anxious to go to first to file? Just to be like everyone else or because the backlog of patent interferences is so great?

  68. Gene Quinn April 2, 2011 11:18 am

    Tom-

    First to file should help independent inventors in particular because they will change their behavior and not make the crazy mistakes they make now with respect to first to invent. The simplicity of first to invent is alluring, but the overwhelming number of inventors have no real clue what it means. It is misleading.

    For those who don’t care about foreign rights you can just publish and effectively prevent others from patenting. Then you have 12 months to prepare and file a provisional patent application, and another 12 months to prepare and file a nonprovisional patent application. So first to file seems to benefit independent inventors, start-ups and small businesses interested in the U.S. market only.

    I personally think if first to file necessarily requires prior user rights (which is a specious argument) then we should simply not do first to file. Too much uncertainty with respect to ownership in a prior user rights regime.

    -Gene

  69. American Cowboy April 4, 2011 9:25 am

    Gene said “Third, the conversation was dealing with malpractice, which is when someone sues you because you have deviated from the standard of care. Filing a patent application within minutes, or even hours or days, is not the standard in the industry.”

    The industry standard is likely to change if we change the law to ftf.

  70. Gene Quinn April 4, 2011 9:30 am

    AC-

    What do you think the industry standard will be? It seems that you feel that the industry standard will be that you must file the application the next day or within several days and no disclosure and acceptance by the client of a timetable that you adhere to is sufficient. Am I misreading you?

    Is the trouble that you don’t want to have to tell a client when to expect you will be able to file and then meet the target?

    Just trying to figure out where your concerns about malpractice are coming from given there are easy solutions it seems.

    -Gene

  71. American Cowboy April 4, 2011 11:03 am

    I think you are correct that if you tell the client that there are several hurdles that must be crossed before the filing can take place and he must agree to accept that delay in getting those hurdles crossed, and your performance meets those criteria, you should be safe, in most cases. However, reasonable minds (and unreasonable minds, which often seem to show up in litigation) can disagree as to when those hurdles have been crossed, so that the delay is acceptable.

    Also, telling all of this to the client so he can give a fully advised consent to what you are asking him to sign on to, will take additional time, apparently before you even have an attorney/client relationship. And recall that this is likely to be at the beginning of the relationship with the client and if he sees that you are starting out with a CYA atttitude at the outset, that does not help the relationship. I suppose you can put it all in a lengthy form engagement letter and tell him “here, sign this before we have an attorney/client relationship,” but if the Court later says that was akin to a contract of adhesion, the attorney will have a hard time relying on it. We are supposed to be fiduciaries, don’t forget.

  72. Gene Quinn April 4, 2011 11:31 am

    AC-

    So you think that a prospective client who presents and then never moves forward to hire you would have a malpractice claim under FTF if you don’t file quickly enough? I’m trying to understand the concern and it just doesn’t seem to make sense, not at least based on the way I do business.

    Yes, attorney-client privilege attaches when one seeks your professional advice, but an attorney-client representation relationship doesn’t attach then unless you allow the client to think that you represent them. That is why in every e-mail my disclaimer says that a representation relationship only exists when there is a signed agreement and the retainer required has been paid.

    Then in you representation agreement you just have standard language that explains how long it will take. You explain that when you transmit a draft or inquiry that in order to keep with the estimated time table the client will need to respond within X days. This really isn’t rocket science. We have all done this before and we all know about how long projects take. So I don’t see the harm in including it in a representation agreement. I do that already given that my clients always seem to want to know what to expect in terms of a time table, which seems reasonable to me.

    I think you are making a mountain out of a mole hill here.

    -Gene

  73. inventor0875 April 20, 2011 12:08 pm

    Gene,

    You have made a valiant attempt at trying to work around a fatally flawed wording of the proposed 102b but the problem remains ….

    Requiring public publication to obtain a grace-period will seriously hurt U.S. competitiveness and start-ups in multiple ways, including:

    A) Loss of flexibility in decisions regarding the quid pro quo of receiving exclusive rights in exchange for public disclosure.

    B) Allows large competitors and copiers (China/etc) to immediately exploit the creator(s) efforts.

    C) Loss of potential first-mover product introduction advantages (why invest?).

    D) Immediate loss of foreign patents.

    E) Starts an inflexible/non-resettable 1 year clock for filing a patent application too early in the invention process (e.g., at conception of raw concepts).

    If one can obtain a grace-period with a public disclosure, then why not also with a confidential-disclose that is made to the U.S. Patent Office.

    Revise the proposed 102b so that the grace period can also be obtained with a confidential-disclose that is made to the Patent Office.

  74. inventor0875 April 20, 2011 12:10 pm

    If one can obtain a grace-period with a public disclosure, then why not also with a confidential-disclose that is made to the U.S. Patent Office.

    Revise the proposed 102b so that the grace period can also be obtained with a confidential-disclose that is made to the Patent Office.