Posts Tagged “First to File”

I doubt that it’s news to many people that the US is changing from a so-called first-to-invent priority system for awarding patents to a first-(inventor)-to-file system. And that pending change (March of 2013) has a lot of people running around as if the sky were falling. It’s not. You aren’t really in a race to the patent office to beat another inventor.

For most inventors this switch, per se, will have no effect on their patent applications. The chances that you and another inventor more or less simultaneously invent and file the same invention is small. After all, there are currently just a handful of “interference” procedures to sort out who was the first to invent. And in those procedures, the first inventor to file usually comes out on top anyway.

That’s not to say the switch will not have an impact on you. The collateral damage from the switch to first to file is that the scope of problematic prior art is significantly increased. In the present system you can “swear behind” a piece of prior art by presenting evidence that your date of invention was earlier than the date of the prior art.

Such swearing behind only makes sense when the date of invention is important (as it is now). Essentially you are proving that you had fully conceived your invention before the piece of prior art was known to the public; even if it took a year of diligent work to reduce your invention to practice (during which time the prior art became public) you are still entitled to the patent.

Under first-to-file, the idea of using the date of conception to provide priority goes out the window… all first to file cares about is, not surprisingly, when you file. But even this change is not a totally new concept to wrap your head around. If you’ve even been interested in getting a patent outside the US you have seen this issue before. In virtually the rest of the world, “absolute novelty” reigns; if your invention has been disclosed to the public, you lose.

Admittedly, under the new US rules things are even more difficult since prior art can be invalidating for both novelty AND obviousness, but the basic principle of needing to file before someone else makes a public disclosure is the same.

So, after March 16, 2013, there’s no race to beat another inventor to the patent office but there is an imperative to file before some (academic sort?) publishes something that will destroy your right (and everybody else’s) to get a patent. But right now, before first to file, you should make a concerted effort to file (at least a provisional application) on any potentially patentable invention you’ve been working on.

If you don’t, the piece of prior art you can swear behind on March 15th will be invalidating on March 16th.

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It’s one of those “evergreen” local TV news segments. You’ve heard it many times: “People/fans/devotees starting lining up at 6AM today to be among the first to buy… the new iPhone/Red Sox tickets/the latest version of Grand Theft Auto”. Luckily for inventors, getting priority for your patent application doesn’t involve camping outside the patent office until the examiner first opens your file – not many of us have two or three years to kill. In fact, under the still current “first to invent” law we don’t have to worry about being first in line at the patent office (although it never hurts!)

However, as we all know, the rules have changed and more changes – “first to file” in particular – are coming soon. A few weeks ago I got an email from a client. He wrote:

“We having something that we would like to patent. What are the guidelines now with the new patent law on how long can you wait to do the application?

I told him that nothing in the new law changes how long you CAN wait before filing. Currently you CAN wait indefinitely to file but it there is a risk you might lose out to a later inventor when the patent office determines you could have filed earlier.

What will change after March of next year is that the risk of losing to the later inventor becomes a certainty. First To File means that if you don’t file “now” and some other person later independently invents the same invention and files before you do, he or she definitely gets the patent.

Of course, under current or new rules, you only lose your right to the patent if there is a second, independent inventor. The longer you wait to file, the greater the risk of losing the patent to another inventor. Under “first to invent” you might lose it for holding your invention back while the other inventor was willing to share. Under “first to file” you were simply too late getting in line at the box office… uh, patent office.

My advice for now and after next March is to file at least a provisional application as soon as you practically can. Make sure you have a place in the ticket line. If you are pretty sure that no one else is working on the same invention, you can periodically re-file the same application provisionally, thereby pushing back the deadline for converting to a regular application. It’s like letting people who don’t want the same seats as you do go in front of you in line.

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Around here (Newton, MA), everybody is anticipating the running of the Boston Marathon in two weeks. As is the case with most race events, the Marathon groups runners into classes, either literally or figuratively, to make the competition more interesting and fair.  Thus, my 52 year old neighbor’s 2:51:44 time was 606th overall last year but rated him 16th out of 2180 runners in his division.

Which brings us to patent reform – huh? One of the much debated changes in the patent reform bill is the change to the “First Inventor To File” rule to determine who gets a patent when two entitities file on the same invention, instead of the current “First To Invent” rule. Many other pundits think this “race to the patent office” puts small entities at a disadvantage. I disagree.

I think the conclusion that FITF is bad for small entities is an exaggeration or extrapolation from a few individual cases. While large entities arguably have the resources to race to the PTO now and think later, it is also true that they have, generally, a multi-gated process for making the decision to file, a process that gets them to the starting line late.

A small entity can get everyone in the company to decide in a day about filing and then work with focused intent to make it happen, whereas large entities will:

  1.  have the inventor file an invention disclosure – often asking for economic justifications and almost certainly asking the inventor to explain how the invention is going to fit into the company’s business;
  2.  require the inventor’s manager to sign off on the disclosure;
  3.  schedule the disclosure to be reviewed at a review meeting – perhaps quarterly, perhaps semi-annually;
  4.  at the review meeting, people who have a siloed view will evaluate the disclosure;
  5.  the disclosure will be considered competitively in light of the IP budget and other disclosures;
  6. if the disclosure is approved, a meeting with the patent attorney, often outside counsel, gets scheduled;
  7. outside counsel goes off and drafts [the claims and] the spec. Sends them to the inventor for review;
  8. inventor either rubber stamps (bad quality control) or eventually gets around to reading the draft (tick-tock, tick-tock);
  9. attorney files the application.

Of course, this too is an exaggeration, but I contend that a small entity is much more likely to identify and act quickly on important IP matters than a large entity will… if for no other reason that this one patent is much more important to the survival of the small entity than it is to the large entity.

What is your experience? Do you think small or large entities will gain an advantage from FITF?

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For the fourth consecutive Congress our legislators will attempt to pass reforms to our 60 year old patent laws. My sense is that this year it might actually pass, driven by Mom and apple pie…uuh I mean the (“no-cost”) job growth and competitiveness arguments. Of course, what’s good for one group of inventors may be problematic for another, so we’ll have to wait to see if the bill gets recycled once again or finally enacted.

A draft of the Patent Reform Act of 2011 is available online (http://judiciary.senate.gov/legislation/upload/BillText-PatentReformAct.pdf). Based on a summary at www.qmed.com, here are a few of my thoughts on the first of about a dozen changes.

The Act transitions the U.S. from the first-to-conceive-and-diligently-reduce-to-practice system to a first-inventor-to-file (FTF) system – I think this change is a benefit to everyone (except procrastinators), particularly with our (US) provisional application process which lets an inventor get an application on file quickly.

Everybody benefits by eliminating the cost and record keeping requirements needed to support an interference proceeding (which is how the “first-to-invent” determination was made, if needed). These costs and requirements were particularly burdensome for the small inventor since the primary evidence – the invention notebook – really needs a system behind it to prove its validity. The small or solo inventor is hard pressed to find people to “read and understand” his work on a regular basis or to have an independent system to provide incontrovertible evidence to support his witnesses’ testimony.

Furthermore, we know the small inventor may have to set his invention aside (to earn a living), bringing his “diligence” in reducing his invention to practice into question. With FTF the whole diligence question goes away. And I can make a fair argument that the first person to reduce a conceived invention to practice is the one who deserves the patent (instead of the current US rule that the conception part give you the priority). If invention is 1% inspiration and 99% perspiration, then the patent should go to the person best at doing the 99%!

In a related change, the Act seems (to my eye) to modify the US-only one year “grace period” for public disclosures such that only disclosures by the inventors are given the grace period. The current rule allows an inventor to file for a patent within one year of a public disclosure of his or her invention – no matter who makes the disclosure. If the disclosure comes from someone other than the inventor, the inventor can pull out his evidence that he was first to invent and proceed with his patent application. In the rest of the world, where there is no consideration of who invented first and thus no mechanism for examining the evidence, there is no grace period and any public disclosure is considered prior art to your application. The rule prevents a non-inventor from rushing to the patent office with an application based on the public disclosure. Clearly, in a FTF system, some rule is needed to block fast copy-cats from getting a patent on some other inventor’s work.

This new rule is a compromise between the current one year grace period for all disclosures here and the no grace period in virtually the rest of the world. I think this is a good compromise that the rest of the world could adopt. After all, if the public disclosure comes from the applicant it does not cast doubt that he was an inventor. Furthermore, one of the purposes of the patent system is to encourage inventors to share the details of their invention with society. Allowing public disclosure prior to filing furthers that goal.

I’ll comment on some of the other aspects of the (re)proposed Act in later posts.

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