This is a continuation of the interesting chain of comments found here.
The incentive debate is interesting. Unfortunately, we do not have credible evidence about what value society should place on various aspects of the technology development process. We do, however, have hunches:
Invention: There are many of us who believe that the invention process is intrinsically beneficial wholly apart from disclosure of the resulting invention. Often, the result of invention includes new products or more efficient technologies that simply would not have been otherwise available apart from the innovation. At times, the invention may be used by the public without disclosing the invention itself. In those cases, the public still benefits because of the availability of the new technology. In addition to the benefit of new products, there is also an educative effect of innovative efforts. Even if a research initiative fails today, the researchers (and perhaps their organization) will have learned something that will help them in future endeavors.
Disclosure: Few (if any) inventions are stand-alone. Rather, inventors “stand on the shoulders” of those who have come before. Of course, the only way that today’s inventors know yesterday’s technology is through public disclosure. Now, disclosure usually comes from something other than the patent document — such as released products, academic papers, etc. Disclosure also improves the potential for competition in the market.
For invention and disclosure, we also make the assumption that earlier is better.
One aspect of the debate on first-to-file is the question of whether more focus should be placed on invention or disclosure. Today’s first-to-invent favors an early invention date, while the proposed first-to-invent system would push the (relative) focus toward disclosure.
To try and place in context PUR under a FTF system, imagine the profound relief places like universities will feel when they find out they hold PUR versus a patent in hand. I am quite sure that venture capital will jump at the chance to create a startup venture based on the transfer of technology protected by PUR…
Regarding my comment about the treatment of secret prior use in a first-to-file system, my comment may not have been as clearly stated as it could have been. What I meant to refer to was the interaction of prior user rights and FTF systems.
Under the current US system, (except, recently, for business method patents) a prior secret user can be found to infringe and the prior secret use will not serve to defeat the patent. Thus, there is, to a degree, an incentive for one to not be a prior secret user unless they are certain they can adequately maintain the details of the use secret. Coca Cola is one company that has managed to do this.
In contrast, in many (all?) FTF systems, the prior secret user obtains prior user rights that server to defeat infringement. Thus the prior secret user has no incentive to disclose as they at least are “protected” against infringement.
To be sure, one could put together a FTF system without prior user rights. Mmmmm, I wonder if that would happen. The newly proposed legislation would expand the narrow business method prior user rights to all patents.
MD,
Much university, and virtually all federal laboratory, research in the US is achieved via government sponsorship. At some institutions within the University of Californis system, it is reported that as much as 2/3 of all the money available for research comes in the form of government contracts, grants, cooperative agreements, CRADAS, and other contractual arrangements of a similar ilk. (Whether US Government involvement to such a large degree in sponsoring basic research is a good idea is of course the subject of an entirely different debate.)
Therein lies the problem. Bayh-Dole was in significant measure enacted to encourage universities and laboratories to “join in” the US patent system. They have done so, and significant economic benefits have been realized from their participation.
In the Patently-O article entitled “Wegner on Patent Reform”, Mr. Wegner reported on the recent hearing before the US House of Representatives Judiciary Subcommittee. One presentor to the subcommittee was William T. Tucker, representing the University of California system. Mr. Tucker is the person who manages its technology transfer program, and his views and experiences largely reflect those of other universities that are actively pursuing technology transfer programs. As Mr. Wegner noted, Mr. Tucker “…stayed away from the “second window” debate, but uniquely focused upon a need to retain the “first inventor” system.”
Being personally familiar with how Bayh-Dole has impacted university and federal laboratory participation in the US patent system, I can well understand why Mr. Tucker limited his presentation to just the one issue of FTI versus FTF.
Accordingly, I see an important need for the debate to be expanded beyond just international harmonization. Harmonization with the US between competing filing systems needs to be considered before the debate moves to the harmonization of international patent systems.
I believe a good first move would be for those in “legal academia” to leave their offices at the law schools and stroll over to the the research schools at their respective universities to talk with their research colleagues and better understand the issues. Personally, I am bemused that professors on one side of a campus advocate change that may have what is potentially a significant negative impact on their academic counterparts on the other side of the same campus, as well as the university as a whole.
Which is better: FTF or FTI? In all candor I do not know because of the many subtleties involved. I do know, however, that the issue would benefit from enlightened and informed debate. Such a debate has not taken place, and the failure to do so can have profound ramifications for the future of technology transfer programs crafted under the umbrella of Bayh-Dole.
Merely as an aside, the University of California manages at least three federal laboratories, most of which are under the auspices of the US Department of Energy. Hence, there is much more involved than just the research pursued “on campus”.
I would think that First to File would discourage prior secret use, if anything.
Dear Mr Slonecker, thank you for a most thought-provoking post. Debating whether FTI or FTF is better, for kitchen tool inventions, or computer-implemented business method tweaks, is rather boring. Much more interesting, and strategic, is the interaction between patents and blue skies university research, and the tension between the academic’s basic urge to publish and the sponsor’s basic urge to keep it all secret. If FTF comes in, inventors will be forced to file their papers at the Patent Office one day before they get first published in an academic research publication. How detrimental that is, to the encouragement of basic research in universities, I am not sure. Fact is, businesspeople and lawyers, in competitve environments, are extremely adept in learning to live with new rules, and using them to advantage. Cat and mouse, tax consultant and tax inspector. My hunch is that, when it comes to university industry links, the US does it better, and will continue to do it better, even after FTF rolls in.
MD,
The performance of “basic research”, as opposed to “applied research”, within the US is doubtless not different in any significant manner from how it is performed in the rest of the world. What may be an important distinction, however, is that much basic research is performed in the US by academic institutions and federal laboratories.
About 25 or so years ago US law was amended under the provisions of legislation known as the Bayh-Dole act to encourage institutions and laboratories to become participants in our patent system. Since then participation has grown exponentially, with many of these new participants firmly embracing the role of technology transfer to the private sector. Given how basic research is performed and documented by these new participants, and given that licensing revenue is rapidly becoming an important source of funding for research support, a change from a FTI to a FTF system presents significant, and in some cases insurmountable, problems for their continued participation. A FTF system will likely place many of these participants in the untenable position of having to disclose via the patent system research work well before that work has been vetted via peer review. Being the first to invent, but not the first to file, would inevitable curtail tech transfer programs that have proven effective in the creation of startups.
Hence, I do not believe such a landmark change to the current system used by the US should be driven primarily by the perceived benefits of harmonization. It requires careful consideration, with harmonization being primarily how US law might be changed in a manner that does not do violence to the interests of those engaged in basic research. Far too much benefit has been realized within the US to ignore the consequences of a significant change in US Patent Law from FTI to FTF.
David Metzger’s comment above strikes me as a classic negative reaction (No change here please) to the unknown world that will follow, when First to File is implemented. But it isn’t unknown, to everyone outside USA. He writes that the “good” cases he files and prosecutes are those prepared with USA in mind. He is bang on right. Those prepared to fit all the unique features of US patent law will inevitably be “good” compared with those written for the otherwise universal ROW standard and without the “special” features of US law in the mind of the drafter. That’s why I write that USA might decide to maintain its law different from ROW, to give US-savvy filers the edge. Trouble is, the big users are these days not the same as “US” industry. The big corporations are fully international, with as many owner shareholders outside USA as inside. So GE or GM is as much ROW as USA, these days. The irony is that 20 years of valid rights based on a skeletal but sufficient enabling disclosure is characteristic of current ROW patent law, and NOT that of USA. The only thing in USA which favours the small guy is damages awards big enough to bankrupt the infringer, and SCOTUS is doing something now to take even that away from the little guy. The savvy little guy should now throw his support behind patent reform, to again catch some chance to “win” against the big corporations, just like the little guy has, outside USA. Lastly, First to File indeed permits retention of technology as a trade secret, just like First to File. But does that “promote” secret use? I think not. If you don’t publish, and you don’t file, you leave the way clear for a competitor to file, and get a valid patent. Best file, surely. So how does FtF “promote” secret use? Beats me.
David Metzger wrote “Oh, and first to file promotes prior secret use as one who does not disclose can use prior secrete use to their advantage. Society does not gain anything from the non-disclosure of that prior secret user.”
I am sorry, but can you explain this in a little more detail?
JL:
I don’t think you have it correctly framed.
In the first to invent system, the inventor will feel more comfortable developing his/her invention further. Society gains more by the better developed invention (and disclosure).
I haver first had experience repairing and further developing many foreign originated cases. The good ones are those prepared knowing in advance counterparts will be filed in the US.
Oh, and first to file promotes prior secret use as one who does not disclose can use prior secrete use to their advantage. Society does not gain anything from the non-disclosure of that prior secret user.
Mark Perdue wrote “Just the fear of losing a filing date to a competitor will cause applicants to file early and often, much moreso than in the case of preserving foreign priority. The applicants will be ably assisted by their counsel, equally fearful of losing a filing race to a competitor and facing malpractice liability.”
See, I don’t see this happening. Budget constraints for one. But also, my understanding of 102(g) issues may be a bit limited, but I believe the applicant needs to work diligently from conception to RTP and from RTP to application filing. Diligence is open to interpretation, but that sometimes persons have been found not to be diligent where they interrupted progress for a mere day or two. How many patents currently issuing can truly be taken back to their conception date? If not then, then it is always some gray indefinite time before filing, which I think is useful to be avoided.
I do believe that OC will have to more worrry about but this can be handled up front by straightforward discussion with the client and the wording of the retention letter.
Isn’t this really a debate over which party, inventor or society, is better served by controlling the time-value of disclosure? A first-to-invent system grants this control to the inventor. He can sit on his invention as a secret for X amount of time and either disclose or keep it a secret. A first-to-file system eliminates this value and grants the public with the time-value of early disclosure.
This is really just a distributional argument. As between X and Y, society does not care who receives the entitlement so long as an invention occurs and it is disclosed. To think that invention is promoted by the “value” an inventor gets in deciding whether or not to file a patent application is asinine. Its like saying that I have an extra incentive to write the great American novel because my heirs will get 20 years of extra exclusivity after I’m long dead.
From an incentives point of view, the arguments posed by first-to-invent-ers basically amounts to: I will be less likely to invent if I think all of the time and effort I put into the invention will be trumped by someone who invented second will be able to jump ahead of me in line simply because they filed first.
OK. Fine. But why doesn’t this argument apply to first-to-invent: I will be less likely to invent if I think that all of the time and effort I put into invention will be trumped by someone who invented first.
In both cases, I should be dissuaded from inventing because of the potential for losing the race — invention or filing. If anything, the risk that someone invents first is more salient risk because that is not something that an inventor in the race can control. An inventor has control over his own filing preferences and can mitigate the risk of first-to-file by simply filing once there is a reduction to practice. The threat of a second inventor/first filer is relatively remote vis-a-vis the threat of being the second inventor in a first-to-invent system.
CONCLUSION –> Society is gains little by giving the time-value of disclosure to the first inventor because it is highly unlikely an inventor is driven by the right to sit on an idea before disclosing. Society gains more by forcing inventors to disclose sooner.
Mr. Mooney,
Unlike you, I do not reside behind a wall of secrecy to hide my true identity. When I interject a comment it is only to try and help others formulate their views/opinions. I do not denigrate the views/opinions of others. Moreover, I do not make casual, derisive comments as you seem prone to do.
What you may consider to be humor by your posts is not seen that way by me. It is not appreciated, whether directed at me or at anyone else who participates in this forum.
You are obviously a quite intelligent individual. I urge you to use your intelligence constructively.
I have to disagree with this statement:
“because most large companies already typically file both US and PCT applications”
While it is true that a reasonably large number of applicants attempt to file in time to preserve foreign priority, that does not mean that the number and quality of applications will not increase and decrease in the event of adoption of first-to-file.
Just the fear of losing a filing date to a competitor will cause applicants to file early and often, much moreso than in the case of preserving foreign priority. The applicants will be ably assisted by their counsel, equally fearful of losing a filing race to a competitor and facing malpractice liability.
The idea of our patent system becoming like that of Japan or the EP makes me nauseous.
“Responding to his comments with sarcasm serves no useful purpose.”
Michael, it’s Friday and you forgot to take your medicine. Please go to the liquor cabinet and find some of that single malt you opened to celebrate Judge Newman’s nomination to the Federal Circuit.
Mr. Mooney,
Mr. Pedersen appears to have made a sincere attempt to interject what I believe are quite helpful comments to the discussion. Responding to his comments with sarcasm serves no useful purpose.
I’ve stated, along with DaTD, that early publication is the most damaging aspect to inventors-and I gave a good true example- there will be more trade secrets for sure- for what they’re worth- try to determine who leaked if it gets out- they are very limited in their legal coverage.
“Look forward to more apps (with a likely decrease in quality as we won’t have time to wait for reduction to practice)”
(shrugs)
Bad patent applications are the norm. The problem is bad patents.
I would really like someone to show me the number of interferences that were won by Junior parties in the last five years. I just don’t think that this rule is going to affect that many applications a year.
A first-to-file law will not have a significant effect on the way that most companies file their patent applications because most large companies already typically file both US and PCT applications so their always exists that pressure to file an application as soon as possible. However, generally a company is willing to take a risk that their patent may be filed a few days or weeks later to ensure that the patent that is drafted will be upheld in any subsequent litigation. I’ve never found much value in a poorly drafted patent specification.
The overly-strong “unconsititutionl” and “there can only be one first inventor” statements above are simply counterfactual.
Sometimes there’s a very clear answer to “who’s first,” sometimes the answer is foggier. First-to-invent and first-to-file are simply two different ways of coming to a legally-definitive answer to an inherently foggy question.
Current law does not ALWAYS favor “first to invent,” it favors first to invent coupled with reduction to practice and diligence. Current 102(g)(1) law is simply a way of resolving a conflict between two inventors who are reasonably close to each other.
For mathematically inclined, the order of invention under current law is only a “partial order,” it is not a “total order.” That is, the ordering isn’t transitive – you can easily have a situation under current law where A invents before B, B invents before C, and C invents before A.
I am undecided whether first-to-file or first-to-invent is better. I lean toward first-to-file, because it seems to me that the amount of “justice” and additional incentive that first-to-file might provide is totally swamped out by the costs of interferences. I understand that only a tiny fraction of junior parties win interferences, so what we have effictively is a VERY EXPENSIVE version of first-to-invent. But I have no hard data, just anecdote.
If anyone has data, I’d be interested to see it.
Brad Pendersen:
Thanks for the link to your article.
I watched the hearings yesterday and was dismayed by the sound bite responses given to the questions posed. Many responses seemd to disjointed in terms of dealing with the basis for a position taken.
I was particularly dismayed by the feeling in the room that first-to-file is an eventuality. In fact, all of the panelists agreed that was the case in response to a question asking if that was their belief.
Back in 1996 or so, Robvert Girouard wrote a paper including a discussion of the differences between the US and JP systems including the differences between their priority systems. Here is a link:
link to 64.233.167.104
The conclusion was that the JP system of priority favored incremental inventions whereas the US system favored large advances (i.e., significant inventions). I am of the same view and believe that the way the Japanese use their system is evidence of this.
Note: the discussion also concludes that the JP system of priority favors the development of technical specialists over our lawyer-centric system.
The biggest loser in the first to file system is equity. The first to invent system interjects a lot of equity by giving time for one to develop or merely not have to race to the patent office. Moreover, for those inventions deemed significant there currently is the ability to fight over inventorship and challenge support for claims in your opponent’s application, i.e., you don’t lose your invention just becuase of a filing date. Most interferences settle to mutual benefit of the parties. Mossignhoff’s statistics are so misleading and shallow that those who tout them for any particular veiwpoint should be embarrassed to use them. Indeed, Lemley did a much more indepth study and found that Mossinghoff’s stats were not indicative of anything. As one should expect, Lemley determined that there was no real statistical bias toward first filers as Mossinghoff claims.
It has long been acknowledged that it is easiest to get a patent in the US. If first to file goes through with its change in the make of the prior art, US inventors will be losers. US inventors will not have an easier time of getting a patent in the biggest market (and most times getting a US patent is sufficient). Instead, they will be subjected to the harsh bright line tests used in the rest of the world. Again, a loss of equity in our system.
Our system inteference system need not be cumbersome. It is the USPTO implementation of a Byzantine and harsh inteference system that makes it so daunting. I say all we need to do is change the interference rules.
Regarding harmonization, I just don’t see the need. The rest of the world can have its harsh system, and US inventors can have to comply with it. However, here everyone gets to take advantage of the first to invent system. The changes to 35 USC 104 eliminated the discrimination that was the main reason for the call for a first to file system. I just don’t get why there is such a push to go to first to file when right now we essentially provide what the rest of the world does and more. The first to file system will get rid of the “more.”
Being granted a patent is not a fundamental right. While the Constitution gives Congress the POWER to grant exclusive rights to inventors, Congress is under no OBLIGATION to do so. While Congress has exercised that power and created rights (as in 35 USC 102 which Anon cites), the fact that it can amend or repeal those statutes at will means the right to obtain a patent is a conditional right rather than a fundamental/consitutional right.
While I would have a “takings” problem if Congress were to revoke patent rights already granted, Congress can refuse to grant any patent rights in the future and can certainly limit the grants of such rights to first filers. Whether it should is another question.
As for the constutitionality of a first to file system, I would think it (and virtually any other patent system Congress might enact) would only have to survive rational-basis scrutiny.
Mr. Pedersen,
Thank you for the link to the paper you co-authored. Its contents are a thoughtful treatment of the FTF vs FTI systems, and persons weighing in on a change from one system to the other would do well to read it.
I happen to believe that while FTF may add some degree of “simplicity” to the patent law, it would likely have several unintended consequences. At least one such consequence pertains to the technology transfer process pursued by educational institutions and federal laboratories under encouragement of the Bayh-Dole Act. I will not elaborate in the interest of brevity, but I will note that a “rush to file” system is inconsistent with how these institutions and laboratories operate in the real world.
FTF? FTI? This is not a question that can be answered with alacrity.
Merely as an aside for those quick to embrace a FTF system, is it not difficult to reconcile arguments in favor of such a system with the concept of prior user rights, and especially in areas involving technology transfer under Bayh-Dole?
Don’t we also want to take a look at how this will affect our insurance premiums? With the first-to-file system, I would hate to be in the firm that filed a day late. Maybe we should ask that the bill include immunity to patent prosecution counsel. Don’t we all work to much now, as it is.
Great point that this will increase filings. Also, the changes to divisional practice (forcing us to file all the dividionals at once) will also increase filings. Finally, the lack of RCE’s will increase appeals. I don’t think John Doll has really thought through the effect of his changes and the new law – both of which will have the opposite effect (in my opinion) of what he says he wants. Look forward to more apps (with a likely decrease in quality as we won’t have time to wait for reduction to practice), more appeals, and increased pendancy. Also look forward to more lawsuits and more uncertainty as the courts interpret the new law.
I guess it is all good for billings though…the in-house folks driving this must like to pay our fees!
What about the independent inventor? Are we losing focus, or are we looking at our billings? The first to file system will encourage more patents, more often, without working through the details. Then, you eliminate or strictly limit CIP’s. Are we destroying the incentive to “do it right the first time”.
Actually, the big losers in first-to-file are the overwhelming majority of applicants who normally don’t have to be concerned about getting an application on file first if they have already reduced their invention to practice. Less than 100 interferences are declared each year compared to several hundred thousand patent applications being file, so only 0.1% of applicants ever end up having to be concerned about interferences. Under first-to-file, every single applicant has to be concerned about how quickly their application gets on file. From a social and economic efficiency standpoint, permitting patent applicants some time after an invention is reduced to practice to research prior art and decide whether investing in a patent application is worthwhile may serve an important self-screening function.
The most likely results of a change to first-to-file will be an overall reduction in the quality of patent applications (because of the pressure to get them on file early) and an increase in disputes over who invented what when as a result of the very likely practice of chain filing of provisional applications as the process of research and development on an invention moves forward (creating disputes over when was the first enabling disclosure filed for two competing chains of provisional applications).
Perhaps equally as important are the public policy reasons why it may be desirable to have a diversity of different kinds of innovation reward systems around the world. The US Patent system, on average, is more favorable to individual inventors and start ups as a way of encouraging entrepreneurship; whereas the EP Patent system, on average, is more favorable to larger, existing technology players as a way of encouraging a more efficient transfer of technology among those existing players. The arguments for increased “efficiency” by having identical patent systems around the world are based on measures of government efficiency, but not necessarily social or economic efficiency.
For an entire article outlining these concerns – see link to cairns.typepad.com
Dennis, I agree with Metoo in that I don’t think this is an issue of incentivizing invention versus incentivizing disclosure. I think you’re looking along the wrong spectrum here.
Legal systems aspire to predictability, definiteness and finality. Hence in the USA you can’t vote at age 17 and 364 days, but you can vote one day later. It’s not that a person gained maturity overnight. Ideally there would be a maturity-ometer which would allow people of whatever age but sufficient maturity to vote. Absent that, age is readily determined, and 18 is an easy proxy to use for determining the requisite maturity.
First-to-file is no different. The law agrees to give limited exclusivity to someone who invents something new, useful and non-obvious, in exchange for putting that invention into the public domain by way of adequate description of the invention in a patent application. Since it would be impractical, from the public’s standpoint, to give the same right to exclude to two different people or legal entities – too many parties for potential infringers/licensees to negotiate with, for starters – there has to be a way to determine who gets the right when two people lay claim to that right. First-to-file is infinitely easier to determine than first-to-invent, and in this regard would put patent law on par with many other areas of the law where ease of determination is a critical factor, even at the expense of other considerations.
Coupled with early publication, first-to-file also makes it easy for others to quit investing resources in developing an invention to which someone else will have the rights – or, more importantly from the public’s standpoint, to begin designing around that other invention.
Clearly, there are situations in which party A would benefit more than party B from first-to-file, just as there are situations in which party A would benefit more than party B from first-to-invent. So what? No legal regime can be a perfect fit for everyone all the time. Seems to me the only big losers with first-to-file would be the attorneys who specialize in interference practice.
Dennis, I agree with Metoo in that I don’t think this is an issue of incentivizing invention versus incentivizing disclosure. I think you’re looking along the wrong spectrum here.
Legal systems aspire to predictability, definiteness and finality. Hence in the USA you can’t vote at age 17 and 364 days, but you can vote one day later. It’s not that a person gained maturity overnight. Ideally there would be a maturity-ometer which would allow people of whatever age but sufficient maturity to vote. Absent that, age is readily determined, and 18 is an easy proxy to use for determining the requisite maturity.
First-to-file is no different. The law agrees to give limited exclusivity to someone who invents something new, useful and non-obvious, in exchange for putting that invention into the public domain by way of adequate description of the invention in a patent application. Since it would be impractical, from the public’s standpoint, to give the same right to exclude to two different people or legal entities – too many parties for potential infringers/licensees to negotiate with, for starters – there has to be a way to determine who gets the right when two people lay claim to that right. First-to-file is infinitely easier to determine than first-to-invent, and in this regard would put patent law on par with many other areas of the law where ease of determination is a critical factor, even at the expense of other considerations.
Coupled with early publication, first-to-file also makes it easy for others to quit investing resources in developing an invention to which someone else will have the rights – or, more importantly from the public’s standpoint, to begin designing around that other invention.
Clearly, there are situations in which party A would benefit more than party B from first-to-file, just as there are situations in which party A would benefit more than party B from first-to-invent. So what? No legal regime can be a perfect fit for everyone all the time. Seems to me the only big losers with first-to-file would be the attorneys who specialize in interference practice.
“Being granted a patent isn’t a fundamental right”
Oh really? Doesn’t 35 USC 102 state that person shall be **entitled** to a patent unless someone else invented or disclosed it first?
I think that the benefits in clearing out resources of the Patent Office (from having to hear interferences) and the Global Harmonization effect (since we are really in a global economy now as metoo hinted) far outweighs any detriment. If an inventor invented first and filed second, then s/he was not acting in the public interest but in his own. Being granted a patent isn’t a fundamental right, and it benefits society more to have inventions disclosed quickly; of course the government may regulate that stimulus as they wish.
Well, if there can be only one inventor, then why does the current system allow a “second inventor” to obtain a patent if the first inventor “abandoned, suppressed or concealed” their invention? Under current law, if a first inventor uses their invention (e.g., a process) in secret and even sells products produced using the invention, a “second” inventor can nevertheless obtain a patent on that very same process – perhaps even years after the first inventor came up with the invention.
Also, under our current system, if someone is first to conceive of an invention, but waits 9 months before filing their patent application, they will lose out to someone that conceived of the same invention six months later but filed their application immediately. The first inventor was the first to conceive of the invention, but was not “diligent” in reducing the invention to practice, either actually or constructively (by filing an application). The only thing the “second inventor” has done differently is file an application before the “first inventor.”
And under our current system, if someone in China is the first to invent something and begins selling a product embodying that invention in China, a “second inventor” in the US can nevertheless obtain an U.S. patent for the same invention (assuming there was no “publication” of the Chinese invention, no sale/offer for sale in the U.S., and the “second inventor” did not derive their invention from the “first inventor” in China). Now, if that “first inventor” made one sale of the product in the U.S. or there was a “publication” of the invention, then the “second inventor” cannot obtain a patent.
So, current law in the U.S. clearly allows a patent to be awarded to a “second” inventor. Also, these various provisions seem to pass Constitutional challenges. Why should first-to-file be any different than situations under current law in which a first inventor loses out to a second inventor based on delay in filing? (e.g., my first scenario in which the first inventor uses their invention in secret – perhaps even unintentionally – yet, a later inventor can obtain a patent, and potentially even preclude the first inventor from continuing to practice the invention which they invented first!)
methree “There can only be one inventor. The inventor is, by definition, the one who FIRST comes up with the invention. The whole concept of a “second inventor” is an absurdity.
As a result, a first-to-file system will change nothing. The battles will still be over who was the inventor.
There can be only one.”
Really? Can you point to a definition, logical theorem, or Constitutional argument that supports this premise?
First-to-File will mean that if you and I each invent something independently, then whichever, one of us files first will be able to obtain a patent, no matter who actually invented it first.
Do you think every second inventor is simply stealing the first inventor’s idea? If I invent something with no knowledge of any work that you did then I invented it period. It is irrelevant if you invented it first. For posterity it may be relevant, but if you invent something first and do not file a patent application and I file an application on my invention that happens to be substantially the same as your invention, then tough cookies.
As I said in the other thread, you often find competitors patenting (or attempting to patent) substantially the same concepts. Do the written descriptions and claims look identical? No. That does not prevent one side from instigating an interference.
Great point methree. The whole idea of identical invention that underlies the premise of identical invention seems a bit absurd to me.
There can only be one inventor. The inventor is, by definition, the one who FIRST comes up with the invention. The whole concept of a “second inventor” is an absurdity.
As a result, a first-to-file system will change nothing. The battles will still be over who was the inventor.
There can be only one.
Well, metoo we will have to agree to disagree about the constituionality, but that is for the other string.
For this string, disclosure underlies the entire public policy of the patent system and that is served through the current requirements for diligence, lack of abandonment, etc. and that suffices. To go the further step and require a filing before someone else files is just wrongheaded. The goal of the patent system from the early days of the city states that invented it is to drive innovation and incentivize it strongly – and disclosure is part of that but the emphasis needs to stay in the right place, on the freakin’ INVENTION. First to file just plain sucks.
While a very interesting debate, let’s not forget that the push for a first-to-file system has nothing to do with the question of focusing more on disclosure rather than invention.
Having said that, the underlying purpose of any patent system is to encourage invention (i.e., “promote the progress of science and useful arts”). I believe that the primary reason for a patent system is to encourage innovation by rewarding inventors. The disclosure of the invention is a secondary benefit of a patent system. As Judge Newman pointed out in Paulik v. Rizkalla, “it is a rare invention that cannot be deciphered more readily from its commercial embodiment than from the printed patent.” Also, the disclosure aspect of our patent system has at times been characterized as the “consideration” which the inventor “paid” in order to receive the benefit of a patent. So, disclosure is still a very important benefit of a patent system, but it really is not the underlying purpose of it.
But, even if you start with the premise that the primary purpose of our patent system is to encourage innovation by rewarding inventors, that certainly does not mean that a first-to-file system somehow goes against this purpose.
As for the argument that a first-to-file system is somehow unconstitutional, I say hogwash.
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