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

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.