Moving to First-to-File

The potential move to a first-to-file system has received little attention — it is certainly not the most controversial in the current package of patent reforms.  Of course, this says more about the Patent Reform proposal than about the potential impact of the first-to-file change. Although not receiving the most press, in the end, this change would have the most impact on the reform package.

The entirely re-written Section 102 would create a bar to patentability if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” prior to the filing of the patent application (the ‘effective date’).  [Use Thomas to obtain the most recent version.] The rule would also encompass 102(e) prior art, so long as the prior art filing was prior to the effective date.  A one-year grace period would remain in place, but only for public disclosures released by the inventors, the assignee, or a signatory to a joint research agreement.  

The first-to-file rule can be thought of as a “race to the courthouse” recording statute.  In the world of first-to-file, it does not matter who invented first, only who is the first to file the patent application.  A perhaps more salient way to think of the shift is that it primarily operates by shifting the ‘critical date’ of 102(b) to the filing date, thus creating a whole new set of prior art that can be asserted against an applicant.

Apart from whether a first-to-file system is a better system, the legislation itself has problems. Most critical is the inclusion of the ill defined clause “otherwise available to the public.” This clause could easily swallow the entire list of prior art types, except perhaps “on sale.” (patented, printed publication, and public use are all available to the public). We’re left wondering what additional activities will be encompassed by subsequent CAFC decisions. 

This amendment would greatly increase the value of creating a joint-research-agreement any time any research or information is shared between parties. In addition, some companies will increase their provisional application filing as a way to ensure that the invention is on file at the PTO ASAP.  Of course, this change will have negative little impact on foreign companies seeking US patents or US companies already filing patents internationally because these rules closely mirror the requirements already in place around the world.

The benefits of first to file:

1. Encourages inventors to quickly file for patent rights;
2. We avoid the potential for fraud in swearing-behind references;
3. Interferences are gone (but derivation litigation is in);
4. A patent would be more difficult to obtain – especially when the invention is easily conceived by another; and
5. Global harmony .

Comments

[anoymousAgent]

Global "Harmony" is a GOAL of this provision of "patent reform."
OK - if its "harmonization" you want, we should go all the way.

So why does the bill include the requirement to submit "quality documents" (similar to the ESD) which is a step AWAY from Harmonization. To the best of my knowledge, no other jurisdiction has them.

What about "inequitable conduct invalidation of patents" - to the best of my knowledge, a defendant can not use "inequitable conduct" as a patent infringement defense in other jurisdictions.

And while we're at it, why doesn't the "patent reform" bill eliminate file wrapper estoppel - this would certainly "streamline" the litigation process, and bring about more "harmonization." (to the best of my knowledge, no other jurisdiction has file wrapper estoppel)

THe idea of "HARMONY" is just another propoganda phrase from the CPF and their ilk.
Just like "modernizataion" lable slapped onto the legislative package which requires the re-adopting of damage apportionment principles which existed more than half a century ago.

Hey CPF and Senator Leahy - just come out and say what you want - stop this bogus propoganda about "harmonization" and "modernization" and "streamlining" (Judge Michel hsa noted that the damage apportion sections of this legislation would make patent litigation MORE burdensome - this is NOT streamlining).

This same comment is directed to the business press, which also includes the "harmonization," "modernization," and "streamlining" propoganda phrases.

[CaveMan]

I find it hard to believe, although less and less so, that you consider first to file "not the most controversial" provision. First to file is considered by most to be the single most controversial provision taken alone of any of the harmonization measures. In my time in practice, I have seen many "reform" packages come and all of them go. All were killed on first to file provisions.

And, with all due respect, your explanation about a race to the courthouse is really rather simplistic for most practitioners. So one has to believe that you are beginning to pander to the uninformed. First to file is a bad idea. Its the equivalent of intellectual clear cutting.

[CaveMan]

"The benefits of first to file:

1. Encourages inventors to quickly file for patent rights;
2. We avoid the potential for fraud in swearing-behind references;
3. Interferences are gone (but derivation litigation is in);
4. A patent would be more difficult to obtain – especially when the invention is easily conceived by another; and
5. Global harmony."

What balanced piece would be complete without a list of the disadvantages or at least some counter points on the purported advantages

1. "Quick filing" encourages the filing of underdeveloped technology
2. Fraud in swearing behind references has not to my knowledge been a big problem
3. Interferences are not a big problem, but when you need one its a nice practice to have available to prove seniority.
4. First to file should not affect the degree of difficulty in obtaining a patent and explanation seems in order here.

5. Since when is Global Harmony such a great idea? The places that have first to file (virtually everywhere but the U.S.) are places where there is very little entrepreneurship outside the Government sponsored corporation. The idea of incubating small companies is non-existent.

[Mitt Romney's PTO Director]

The big problem with first to file is the burden it places on patent attorneys. Every day you spend preparing the application, searching the prior art, discussing options and explaining the patent law to your client before filing is a day when someone else's competing application gets filed. Since you have not immediately filed when getting the first snippet of an invention disclosure from the inventor, you have jeopardized and lost those rights.

So, as a smart, risk-averse attorney, you do immediately file another provisional with every new snippet the client comes to you with. Once you have a proper case with the prior art evaluated and intelligently drafted claims, you file the non-provisional. In the meantime, all of those provisionals clutter your files, the clients files, the PTO files and make the job of the public in trying to determine your filing date for any particular combination of snippets all the more cumbersome.

[Thor]

Thomas Jefferson is rolling over in his grave!

[Mitt Romney's PTO Director]

Oh, another thing: Interferences won't go away entirely. You still will have big contests over what the count is; "right to make" disputes; issues of what the collateral estoppel effects of a lost count are and the like.

[Mitt Romney's PTO Director]

Oh, another thing: Interferences won't go away entirely. You still will have big contests over what the count is; "right to make" disputes; issues of what the collateral estoppel effects of a lost count are and the like.

[Orlando Lopez]

While the benefits of first to file are listed, we need to consider the detriments of first to file to individual inventors and start-up operations:

1. The individual inventors are forced to spend scarce resources and time to "run to the PTO." While an early good provisional is a defense, an incomplete provisional is not (see New Railhead). The individual inventor has to become proficient in patent law or pay a practitioner.

2. Larger companies have more resources to create patent thickets around a filed application (all of which will be published).

While economists question the value of patents in established companies, the importance of patents in obtaining funding is hard to question and seldom studied by economists (except the recent BU study on software patents). If "first to file" impacts the creation of new enterprises, it can have a negative impact on the economy.

The US has an efficient capital market for starting new enterprises. The effect of first to file on this efficient capital market has not been studied or considered, to my knowledge.

[Michael Femal]

I question the benefits of first to file stampede toward global harmonization of the Patent Reform Act. In my many years of practice, I find settlement amongst opposing interests in the invention is the usual results of two or more corporations or a mix of individuals and corporations claiming the same invention. The opposing parties generally come together and agree that each party will disclose their conceptual date with attendant evidence of the same during a joint conference of the parties. Then the party with the earliest substantiated conception date wins and the rest of the parties get a non-exclusive royalty free license to make, use or sell the invention but not to sublicense it. I have been involved with numerous settlements of this type for years in my practice and it seems work everytime whether the parties are mix of U.S. or foreign interests.

Our current practice protects the intellectual property rights of the smaller entity whether an individual or a small corporation who may take a few weeks or even a month or two to raise enough money to afford our services for filing a reasonable patent application. The proposed change will foster more provisionals of dubious quality as all parties race to the USPTO to file and irreparably damage the smaller entity with limited resources. Will this proposed change of first to file really make our system in the US that much better? Is global harmonization with other nation's patent systems that important to sacrifice the rights of the true inventor(s)? I think not on this issue.

[real anonymous]

Mitt Romney's PTO Director, small clients and their smart, risk-averse attorneys will also have the (seemingly cleaner) option of publishing immediately (before the application is filed). The non-innovative Big Corps. (who have enough resources not to need this route) hope that the troublesome patent applicants (and their risk averse attorneys) will avail themselves of this simple option, so that "technology transfer" (to the Big Corps.) will be more quickly and readily accomplished.

So much for 18 month publication.

[David Caracappa]

First, if harmony is so good and the rest of the world wants it, let the rest of the world adopt our system.

Second, I was taught that "first to file" is simply against the Constitutional provision. Am I the only one that was taught that? Am I the only one that remembers that?

The second one to think of a concept is not the inventor (no matter when he ends up at the PTO), and the Constitution gives *inventors* the right to their invention. I also thought there has been litigation on exactly that point many many years ago.

On the other hand, if I'm wrong, and "first to file" is Constitutional, will someone be able to get an enforcible copyright on a creation by being the first to file a copyright application at the Library of Congress, even if someone else created the same expression of an idea first? After all, it's the same Constitutional provision. Isn't a copyright created as soon as the expression of an idea is fixed in a tangible medium? Would a "first to file" copyright violate any international copyright agreement - I'm thinking that international creators "bill of rights" (I'm obviously not a copyright expert).

Might it be reasonable, then, to say that in a similar way: inventorship (the inventorship protected by the Constitution) is created as soon as the idea is "fixed" in the mind - i.e. the standard inventorship test is satisfied? Can this be violated by someone else who thought of the idea later simply filing an application for the same invention?

I obviously find "first to file" confusing and I do not like the idea.

Dave

[Sir or Madman]

David, first-to-invent is as arbitrary as first-to-file. If the constitution is a concern, why aren't we rewarding all the inventors who independently invent the same invention? What's special about the first inventor, particularly if he/she works less diligently than another inventor who discloses it (i.e., files it) first?

The US is de facto first-to-file anyway. Or is there an attorney here to tells his/her client there's no rush? Show of hands?

[Just an ordinary inventor(TM)]

Why did they kill THE PLEDGE OF ALLEGIANCE?*

The three branches of American government have begun to operate at the behest of INTERNATIONAL BIG ORGANIZED BUSINESS, IBOB, not We the People. We have begun to join the rest of the world and become a second-rate nation.

We the People grew up in a strong America which evolved into the world’s leading nation, the only super power. Our children have begun to live in a
Globalized
Modernized
Harmonized
Pasteurized
World-Orwellian-type community.
But George 1984 Orwell missed the boat: Government is not becoming big brother.
Without end in sight, increasingly, government operates at the behest of International Big Organized Business, IBOB IS BECOMING BIG BROTHER.

Our government, which is supposed to belong to We the American People, has been hijacked by IBOB before our very eyes despite THE UNITED STATES CONSTITUTION and its preamble which says:

We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.

Do you recognize the movie from which these excerpts came?:
“There is no America. There is no democracy. There is only … a college of corporations, … and our children will live, Mr. Beale, to see that perfect world in which … all necessities provided, all anxieties tranquilized, all boredom amused.”

Eunuchs all to be, each and every one of us.

This is full text of the sound-bited excerpts above from 1976’s “NETWORK”**:

ARTHUR JENSEN, President and Chairman of the Board of
CC&A, Communications Corporation of America, speaks to HOWARD BEALE:

JENSEN
You have meddled with the primal forces of nature, Mr. Beale, and I won't have it, is that clear?! You think you have merely stopped a business deal -- that is not the case! The Arabs have taken billions of dollars out of this country, and now they must put it back. It is ebb and flow, tidal gravity, it is ecological balance! You are an old man who thinks in terms of nations and peoples. There are no nations! There are no peoples! There are no Russians. There are no Arabs! There are no third worlds! There is no West! There is only one holistic system of systems, one vast and immane, interwoven, interacting, multi-variate, multi-national dominion of dollars! petro-dollars, electro-dollars, multi-dollars!, Reichmarks, rubles, rin, pounds and shekels! It is the international system of currency that determines the totality of life on this planet! That is the natural order of things today! That is the atomic, subatomic and galactic structure of things today! And you have meddled with the primal forces of nature, and you will atone! Am I getting through to you, Mr. Beale?
(pause)
You get up on your little twenty-one inch screen, and howl about America and democracy. There is no America. There is no democracy. There is only IBM and ITT and AT & T and DuPont, Dow, Union Carbide and Exxon. Those are the nations of the world today. What do you think the Russians talk about in their councils of state -- Karl Marx? They pull out their linear programming charts, statistical decision theories and minimax solutions and compute the price-cost probabilities of their transactions and investments just like we do. We no longer live in a world of nations and ideologies, Mr. Beale. The world is a college of corporations, inexorably deter- mined by the immutable by-laws of business. The world is a business, Mr. Beale! It has been since man crawled out of the slime, and our children will live, Mr. Beale, to see that perfect world in which there is no war and famine, oppression and brutality -- one vast and ecumenical holding company, for whom all men will work to serve a common profit, in which all men will hold a share of stock, all necessities provided, all anxieties tranquilized, all boredom amused. And I have chosen you to preach this evangel, Mr. Beale.

HOWARD BEALE (humble whisper)
Why me?

JENSEN
Because you're on television, dummy. Sixty million people watch you every night of the week, Monday through Friday.

HOWARD BEALE (slowly rises, stares at JENSEN on the podium, transfixed—)
I have seen the face of God!

JENSEN
You just might be right, Mr. Beale.

* * * * *

Endnote 1: Today, the Internet is subsuming TV.
Let us eunuchs all to be face reality Internet: “Network’s” “system,” which was described in 1976 by Communications Chairmen of the Board JENSEN, is not fiction – it has begun to arrive.**
------------------------

Endnote 2:
As we speak here, the Second Amendment is being Orally Argued in D.C. v Heller in the Supreme Court -- We the People may begin sliding on a slippery slope and begin to lose our right to bear arms.
http://www.supremecourtus.gov/docket/07-290.htm
QUESTIONS PRESENTED:
Whether the Second Amendment forbids the District of Columbia from banning private possession of handguns while allowing possession of rifles and shotguns.
------------------------

** “Network,” written by Sidney Aaron Chayefsky, who also was a producer and composer, graduated from DeWitt Clinton High School in 1939, earned a Bachelor of Science degree from City College of New York, won a Purple Heart during World War II and many other awards in his lifetime for his creative achievements – he also saw our future and sounded the alarm. But we didn’t listen. The question now is,
IS IT TOO LATE FOR WE THE PEOPLE TO TAKE BACK OUR GOVERNMENT?

[Leopold Bloom]

"The second one to think of a concept is not the inventor."

She's not "the" inventor, she's "an" inventor, unless she derived it from another. The Constitution says nothing about "first" inventors. Under today's system, if the first inventor never files, or if he is not diligent with reducing his invention to practice, then the second inventor gets a patent. Unconstitutional? I don't think so.

[Just an ordinary inventor(TM)]

Excerpt from: http://en.wikipedia.org/wiki/Cisco_Systems

“In late March 2000, at the height of the dot-com boom, Cisco was the most valuable company in the world, with a market capitalization of more than US$500 billion. In 2007, with a market cap of about US$180 billion, it is still one of the most valuable companies.” (footnotes omitted)

[T]

I thought the PTO wanted "Quality applications".

Haven't they heard that --Haste makes waste--?

How does a race to file enhance application quality?

[Michael Martin]

"In addition, some companies will increase their provisional application filing as a way to ensure that the invention is on file at the PTO ASAP. "

No doubt some companies will do this. But it'll be just as useless as filing a provisional that doesn't properly provide 112 support for the claims as it is for the same companies to do this today. The proper approach, both before or after such an amendment, is to file a proper disclosure once.

As far as I can tell, the one good use of provisionals is as an insurance policy against inadvertent disclosures (by sales engineers at a trade show, for example).

[Michael Martin]

@Michael Femal:

Your experience sounds pretty utopian. Have your clients never been involved in an interference proceeding in all those years? Or do these amicable settlements occur after years and millions spent in interference?

[Babel Boy]

No discussion or analysis of FtF is complete or even worthwhile without analysis of the prior use rights.

For instance, Dennis' comment . . .

"In the world of first-to-file, it does not matter who invented first, only who is the first to file the patent application."

. . .ignores the very substantial rights I have to continue using, making, selling the invention if I establish that I was using, making, and selling the invention prior to the date another was first to file. Who is the FtF is NOT the only thing that matters with respect to rights to an invention invented by two or more persons independently.

The proposed FtF system does not cut off any rights of a first inventor who is second to file except the right to exclude others, and the first inventor is not affected by that exclusion himself.

Although you remove the interference proceedings with FtF, the courts will have to start sorting out prior use rights, i.e., whether X made and used the invention prior to Y's filing date. That will likely be a much easier factual determination than the present analysis of coffee-stained notebook pages and signatures of doubtful dates in interference proceedings.

BTW, if everyone would just ignore Just Another Troll's diarrheal diatribes, we can prevent this post from getting sabotaged like all the others in the last month.

Babel

[Babel Boy]

No discussion or analysis of FtF is complete or even worthwhile without analysis of the prior use rights.

For instance, Dennis' comment . . .

"In the world of first-to-file, it does not matter who invented first, only who is the first to file the patent application."

. . .ignores the very substantial rights I have to continue using, making, selling the invention if I establish that I was using, making, and selling the invention prior to the date another was first to file. Who is the FtF is NOT the only thing that matters with respect to rights to an invention invented by two or more persons independently.

The proposed FtF system does not cut off any rights of a first inventor who is second to file except the right to exclude others, and the first inventor is not affected by that exclusion himself.

Although you remove the interference proceedings with FtF, the courts will have to start sorting out prior use rights, i.e., whether X made and used the invention prior to Y's filing date. That will likely be a much easier factual determination than the present analysis of coffee-stained notebook pages and signatures of doubtful dates in interference proceedings.

BTW, if everyone would just ignore Just Another Troll's diarrheal diatribes, we can prevent this post from getting sabotaged like all the others in the last month.

Babel

[Mike G.]

It is only a matter of time until the U.S. moves to a first to file system. With the exception of the United States and the Phillipines, every other patent system uses the first to file system. Over the last 40 years, the normative story driving the reforms has been to standardize global patent pratice. As a direct result, foreign policy has a greater impact on the USPTO than domestic policy. As a prime example, we can look to TRIPS.

Additoinally, a Jeffersonian argument is of no avail. While it is important to understand what the Framers have intended, it is particularly important to note that the Supreme Court has abandoned this pratice in the realm of patents. For example, Jefferson is misquoted as supporitng patents in Graham v. John Deere. Unfortunately, Jefferson was violently opposed to any form of monopolies and in his letters to Madison he repeatedly stated so. Even so, the revisionist history within Graham v. Deere has largely undermined the legitimacy of a Jeffersonian argument.

[Former Policy Wanker]

Ftf = Bilderberg group laying the groundwork for the New World Order. Or is it the Illuminati? Or is it giant shape-shifting lizards? Gimme a break...

Caveman, do you have data to back this claim? "The places that have first to file (virtually everywhere but the U.S.) are places where there is very little entrepreneurship outside the Government sponsored corporation. The idea of incubating small companies is non-existent." I hear this claim often but no dsts is provided. At some point a small inventor wraps himself in an American flag and talks about our pioneering spirit which is still not data.

[Chill Out]

Chill out, people. "Race to the PTO" is a bit excessive. First, as Dennis points out, if you or or clients are filing abroad, they're looking at your earliest Paris Convention priority date, so you're already in a "race to file". Second, although I have heard of cases where a company made (or lost) big $$ because they got their filing in day before (or after) a competitor's, those cases are the exceptions, not the rule. We tend to know who our competitors are and what they're up to, and we tend to know when we need to hurry and when not. And when we've gotten scooped, it hasn't been because we were a few days late in filing, it's been because, for example, a competitor of whom we were aware was more than a year ahead of us, as we learned when their PCT published a few months after we filed our provisional. FTF just isn't the beast the naysayers make it out to be, and it sure makes things more predictable (although it appears that Congress is on course to screw up that part of it...)

[Malcolm Mooney]

Sir or Madam nailed it upthread: "first-to-invent is as arbitrary as first-to-file."

Indeed it is. And unlike first-to-file, it's often impossible to determine unambiguously who invented first.

End of discussion. United States inventors, meet the rest of the world.

[Malcolm Mooney]

"At some point a small inventor wraps himself in an American flag and talks about our pioneering spirit which is still not data."

That is correct. It is not data. There is a term for such behavior though.

[Michael Martin]

@Mike G:

The Philippines abandoned first-to-invent a few years ago. We're the last.

Also, Jefferson was not violently opposed to any and all monopolies. He understood that sometimes government-granted monopolies were necessary for the production of public goods. See, e.g., this letter to his Treasury Secretary regarding the need for the government to grant exclusive rights to a salt mine in order to ensure production:

http://books.google.com/books?id=UAvEUafqB7IC&pg=PA386&lpg=PA386&dq=jefferson+salines+merchants&source=web&ots=tkLEz2SkZk&sig=AA4VBUARtnEEy90mdlidYkyntf4&hl=en

[Sean]

So the proposal really has TWO controversial (and potentially harmonizing) provisions:

1) first to file, and
2) absolute novelty (although slightly modified)

These are distinct concepts, and your summary seems to treat them as one and the same.

[Thor]

Dear Babel Boy,

I think this is the relevant section of Graham v. John Deere. Can you point out where Jefferson is misquoted?

Jefferson, like other Americans, had an instinctive aversion to monopolies. It was a monopoly on tea that sparked the Revolution and Jefferson certainly did not favor an equivalent form of monopoly under the new government. His abhorrence of monopoly extended initially to patents as well. From France, he wrote to Madison (July 1788) urging a Bill of Rights provision restricting monopoly, and as against the argument that [383 U.S. 1, 8] limited monopoly might serve to incite "ingenuity," he argued forcefully that "the benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression," V Writings of Thomas Jefferson, at 47 (Ford ed., 1895).

His views ripened, however, and in another letter to Madison (Aug. 1789) after the drafting of the Bill of Rights, Jefferson stated that he would have been pleased by an express provision in this form:

"Art. 9. Monopolies may be allowed to persons for their own productions in literature & their own inventions in the arts, for a term not exceeding - years but for no longer term & no other purpose." Id., at 113.

And he later wrote:

"Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain time. . . . Nobody wishes more than I do that ingenuity should receive a liberal encouragement." Letter to Oliver Evans (May 1807), V Writings of Thomas Jefferson, at 75-76 (Washington ed.).

Jefferson's philosophy on the nature and purpose of the patent monopoly is expressed in a letter to Isaac McPherson (Aug. 1813), a portion of which we set out in the margin. 2 He rejected a natural-rights theory in [383 U.S. 1, 9] intellectual property rights and clearly recognized the social and economic rationale of the patent system. The patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge. The grant of an exclusive right to an invention was the creation of society - at odds with the inherent free nature of disclosed ideas - and was not to be freely given. Only inventions and discoveries which furthered human knowledge, and were new and useful, justified the special inducement of a limited private monopoly. Jefferson did not believe in granting patents for small details, obvious improvements, or frivolous devices. His writings evidence his insistence upon a high level of patentability.

As a member of the patent board for several years, Jefferson saw clearly the difficulty in "drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not." The board on which he served sought to draw such a line and formulated several rules which are preserved in [383 U.S. 1, 10] Jefferson's correspondence. 3 Despite the board's efforts, Jefferson saw "with what slow progress a system of general rules could be matured." Because of the "abundance" of cases and the fact that the investigations occupied "more time of the members of the board than they could spare from higher duties, the whole was turned over to the judiciary, to be matured into a system, under which every one might know when his actions were safe and lawful." Letter to McPherson, supra, at 181, 182. Apparently Congress agreed with Jefferson and the board that the courts should develop additional conditions for patentability. Although the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson's draft of the 1793 Patent Act.

Thanks!
Thor

[Lionel Hutz]

The person (or perhaps people - I skipped some posts to shoot my mouth off) who commented that independent patent attorneys will suffer the most under a FTF regime is correct.

Independent inventors and small companies will likely benefit. Large corporations are not the most nimble at getting filings in. Also, ignoring interferences, a large company can often tie up a small guy in court over the issue of when the large company first developed and used the technology.

However, the patent attorney who takes one month to complete an application may be crucified if any publication or patent occurs in the interim.

My solution would be the rention letter for the client. Essentially (and I would of course finesse the wording) "The client agrees that the attorney has X months/weeks/days ("the Time Period") from the date of disclosure in which to timely file the application (assuming the client's full cooperation) and that the client will not hold the attorney or this law firm responsible for any intervening disclosures that occur between the time of disclosure and the date of filing as long as that date is before the expiration of the Time Period."

[Lionel Hutz]

I believe you will also see more disputes over 102(f) as more people will try to claim the other stole their idea.

[Just an ordinary inventor(TM)]

Dear Babel:

Thank you for your comment. You are well spoken and you added an valuable comment, especially for the eunuch I suspect you to already be {;-). No really, you made good sense, but only up to a point.

Thank you Mr. Boy for bringing attention to my comment above:

http://www.patentlyo.com/patent/2008/03/moving-to-first.html#comment-107405862

BTW, did you mean to suggest that you are in favor of America joining the rest of the world by becoming a second-rate nation?, that you favor harmonized and pasteurized globalization that would typify a World-Orwellian-type community?

[No One in Particular]

A first-to-file system would be a disaster for creative work at companies, especially large companies.

When I was working at a large company and the company decided that my work merited a patent application, it was made clear that my #1 priority was to supply the company's patent attorney with whatever he wanted. Unfortunately, although the patent application was for an invention made for a project that was finished, I also had several other #1 priority items to work on for the next project and if they weren't done as scheduled I would take a 'hit' for slipping the schedule.

It is bad enough to go through this one-time after the project is done, but going through this several times during the project would
effectively paralyze the development of new products.

A first-to-file system would be a bonanza for the Patent Office. There would be lots of Provisonal Applications requiring no work on their part and lots of badly written patent application that would be easy to reject.

It would also constitute a full-employment program for attorneys.

And it would paralyze American industry.

Of couse, now that most of American industry has been outsourced it will paralyze the rest of the world, too.

The harmony is first-to-file. The melody is Looney Tunes.

That's all, Folks.

[Lionel Hutz]

The other thing most people are forgetting is that in most cases FTF is no different than FTI. It will only be in a few cases that it will make a difference and even then it won't often make a difference. The independent inventor still has to show that they worked diligently from concept to reduction to filing under current 102(g).

[Babel Boy]

Thor

I wasn't the participant who raised TJ, but I think your scholarly submission would pretty well support my understanding of TJ's shifting positions and hypocrisy.

Up until he had patent rights of his own, in his plow, TJ was anti-monopoly. That position changed radically once he realized that he, personally, could benefit from a patent monopoly. He was brilliant enough with words that he could, as they say, make a silk purse from a sow's ear. And he did. This was, please recall, the eminent American and slave-holder who had the gall to pen words to the effect that all men are created equal and with certain inalienable rights. He even worked and sold his own children as slaves.

But getting back to F2F, in 1800 F2F would have been a disaster. Only those living in or near D.C. would have patents because it took weeks to reach the Patent Office from Iowa.

Babel

[Malcolm Mooney]

"Unfortunately, although the patent application was for an invention made for a project that was finished, I also had several other #1 priority items to work on for the next project and if they weren't done as scheduled I would take a 'hit' for slipping the schedule."

Wow, what a compelling story.

[Lionel Hutz]

JAOI,

Not to be accused of being unamerican, but by what criteria are European nations (for example) second-rate? Under almost all criteria the US is never number 1. So why are other nations second-rate?

I will agree with the original poster who suggested that if we are going to harmonize we should harmonize completely and drop all the Rule 56 BS.

[Malcolm Mooney]

Lionel, you forgot to drink your kool-aid.

[Lionel Hutz]

FTF is not unconstitutional.

[coast]

ftf would result in much higher malpractice rates

[Mark Pitchford]

My mother once told me:

"Just because everyone else is jumping off a bridge doesn't mean you have to."

Our 1 year gives small inventors a reasonable time to seek out help and get a patent filed. It may also give them time to shop the idea commercially and decide whether it's viable. There's a reason that the US is tops in innovation, and "global harmonization" isn't that reason. It's because in the past, we did was best for our country, our people, and the future. Why are we fixing something that clearly is not broken?

(You can save your "bad patents" and "dubious validity" and "backlog" comments because they're completely unrelated to my point.)

[Malcolm Mooney]

"ftf would result in much higher malpractice rates"

That is great news for insurance companies, an industry which employs hundreds of thousands of patriotic Americans, allowing those Americans to feed and shelter their children -- our future.

[BigGuy]

ftf would result in higher rates of esophageal cancer

[Mark Pitchford]

Coast,

Thanks for bringing up my other point. Other countries (generally) do not have ESD's, IDS's, supplemental IDS's, and inequitable conduct.

Do you really want to get into a position where you have to file an application the day you get a disclosure to avoid malpractice? What about an ESD? Then how quickly is quick enough.

A solid framework of rules that work together for their intended purpose and do not substantially change makes our patent system valuable. To monkey with that undercuts some of its value as an institution and technological stimulus.

[coast]

applications would have to meet best mode, enablement, written description requirements, etc.

invention scope might be limited too because inventors do not have time to consider alternative embodiments for inclusion in the application

[Just an ordinary inventor(TM)]

Dear Lionel,

Re: “Under almost all criteria the US is never number 1. So why are other nations second-rate?”

Please allow me to answer with a question: Would you rate The United States Constitution to the number 1 position among other constitutions?”

There was a time — not too long ago — that I could have answered by saying these are among the reasons the United States is in the Prestigious Premier Position – Number One:

(i) Our democratic three-branch government (i.e., our Constitution);
(ii) our strong American patent system;
(iii) our greenbacks overwhelming world-wide appeal;
(iv) our nation’s educational institutions’ quality and quantity;
(v) our leadership in nuclear and other energy innovation;
(vi) our military might and technological advantage;
(vii) our invention of the Internet; and
(viii) our dynamic infrastructure.

There was a time…

These reasons point to a few of the goals to which We the American People should aspire, or re-establish, in order to fulfill our destiny to lead – our nation was founded by Leaders, not followers.

Do We the American People really want to cede our Prestigious Premier Position?, step down and trust world leadership to some other nation?, perhaps to a socialist nation?, or a communist nation?, or a (neo)fascist nation?, or a totalitarian nation?
------------------

PS: Owing in part to the selfish greed-at-all-cost of company’s like Cisco that have anonymously spread Pejorative Patent Propaganda, our nation’s Prestigious Premier Position is facing decline. What worries me is that Cisco may be like a cockroach – if you see one, you are probably infested.

* * * * *

Dear Gauntlet,

Re: “While I recall that in that post, he stated that he was Cisco's director of IP, I do not recall where he stated that Cisco was aware of his blogging. It seems clear, to me, that Cisco's liability is premised on this fact being true.”

I do recall reading something Cisco’s IP Director wrote – he admitted that his supervisor knew he was operating Patent Troll Tracker anonymously. That alone may make Cisco liable.

Yes, I think you are right, Cisco’s IP Director Rick Frenkel outed himself, but only because his true identity had been discovered – Rick jumped the gun, apparently thinking he could minimize the damage.

[examiner#6k]

First to file makes the whole system easier for everyone involved with it to use. This includes inventors, attorneys, examiners and judges as well as whatever support staffing is involved. We're having it end of story.

[examiner#6k]

"(vii) our invention of the Internet;"

Ordinary Ordinary Ordinary. Who was it that invented it? Gore? Or do you mean the DOD? Do you also mean that people weren't hooking up computers to talk to one another in other areas of the world and the idea of networks wasn't starting all over, but that we just happened to make a large network first? Don't delude yourself on our "inventorship" of the internet. BTW, who has the patent on it? LOL

[JohnDarling]

"First to file makes the whole system easier for everyone involved with it to use. This includes inventors, attorneys, examiners and judges as well as whatever support staffing is involved."

Really?

"We're having it end of story."

Really?

LOL

[Michael R. Thomas arguably the worlds only inventor of signifence.]

My new invention of match or scratch inventor determining method makes first to file and first to invent obsolete. First to file is no good at determining inventorship in instances where devulgement has occured the race to the patent office frequently produces the patent awarding to frauding inventors and they still retain the right to claim stolen invention status because of the term first inventor to file.First to invent with backdating allows the theft of inventions by claiming previous research and development and creation of bogus evidence allows indivduals to defraud inventors by claiming antiquided existances that dident catch on and become massively known. My system requires 60 days advanced notice of intention to file to eliminate the potential of stolen patents by identifying who is able to produce it on the deadline in that catigory of invention.This eliminates the race to the patent office and awards the patent to the actual inventor. also in devulged situation the actual inventor will also be a filer so devulged inventions by process of awarding to the master inventor by volume of undivulged inventions the concept of worlds only inventor can be realized

[Just an ordinary inventor(TM)]

Early report on the oral argument at the Supreme Court about our second amendment rights
www.cbsnews.com/stories/2008/03/18/supremecourt/main3946657.shtml

But not to worry 6k nobody wants to shoot you, you are the blog Jester. I’ll bet you even wear a classic funny Jester hat.

[MaxDrei]

What's this wierd "inalienable right of every man to the pursuit of happiness" stuff? Presumably the Framers should have written "person" rather than "man", no? Or do women get no right to pursue happiness? But, anyway, what sort of poor neurotic Framer cites the "pursuit of happiness" as inalienable right number 1? Normal not yet adult persons pursue happiness by killing small defenceless animals. Shall it be their inalienable right to continue? Shall they be taught in schools how to pursue happiness, that is, continue what they're doing but in such ways as to get even happier doing it? Normal grown up persons try to lead better lives rather than busying themselves worshipping the Framers by "pursuing happiness". Americans, shrug off your genuflection to an ordinary historical document made by humans with human-level drafting skills, and think more clearly about reforming your patent law to maximise the impetus it can give to innovation in all fields of technology, both pharma and eTech, for the general good of the US economy. If you think that's FTI, so be it. Competition between FTF and FTI will sort out who's right. Better that, than some sort of foul compromise between FTF and FTI that squanders any legitimacy in either of them.

[Lionel Hutz]

"First to file makes the whole system easier for everyone involved with it to use. This includes inventors, attorneys, examiners and judges as well as whatever support staffing is involved."

In this case, E#6K is essentially correct. Private practitioners will have to adjust their client retention practices as I have mentioned earlier, but other than that people who are saying this will be a dramatic difference do not really understand the current system. Most FTI cannot establish diligence anyway.

However, and also once again, I am all for holding FTF hostage until they eliminate disclosure requirements entirely. Harmonize one IP law, Harmonize all IP laws.

[Just an ordinary inventor(TM)]

Dear Max,

This is amazing, I thought your post was terrific – nothing I can imagine could galvanize us Americans to fight for our destiny to lead more than your post.

We the American People aspire fulfilling our destiny to lead – our nation was founded by Leaders, not followers.

Thank you for your inspirational post. Please keep ’em coming.

Also, please see:
www.patentlyo.com/patent/2008/03/moving-to-first.html#comment-107450928

Do We the American People really want to cede our Prestigious Premier Position?, step down and trust world leadership to some other nation?, perhaps to a socialist nation?, or a communist nation?, or a (neo)fascist nation?, or a totalitarian nation?

[Lionel Hutz]

JAOI,

The Constitution is a great document because it was a compromise between a bunch of lawyers and everyone walked away dissatisfied as they should from any good negotiation. It is a sound document to form the basis of a sytem of government. Further than that the ideals espoused by the Founding Fathers are truly great (whether they behaved in accordance with them or not - So what if when they said men were created equal, they only meant white, land-owning men).

However, does this make us blessed by Nationality? I think we could lower the resentment quotient around the world if we didn't engage in jingoistic behavior shouting how great are country is. Words do not count - actions do.

You want to know why are economy is in the toilet? - 50 years of people swallowing the Corporate Mystique which includes such classics as the endless mantra of Deregulation, Union-Busting, and Privatization. If we want to be perceived as number one, we need to act like it, not like some whiny, global bully.

[Just an ordinary inventor(TM)]

Dear Lionel,

Re: “Words do not count – actions do. … If we want to be perceived as number one, we need to act like it, not like some whiny, global bully.”

In the words of Big Dan Teague, played by John Goodman in, “O Brother, Where Art thou?,”
“Once again I find we are in agreement.”

[Malcolm Mooney]

"normal not yet adult persons pursue happiness by killing small defenceless animals."

Bill Frist was not normal.

[PopeGideon]

FTF - great system.

Best benefit, kill horrid interference practice.

By the way, it would not "create a whole new set of art".

What it would do is make all 102(a) art 102(b) art, with the own-publication exception.

[Malcolm Mooney]

"NEW YORK (CNNMoney.com) -- Stocks jumped Tuesday, with the Dow surging 420 points, its fourth-biggest one-day point gain ever, after the Federal Reserve cut the fed funds rate by three-quarters of a percentage point"

Ah yes. Nothing like "free market" capitalism. I'm sure this will go a long way towards accounting for that humungoid pile of invisible, imaginary wealth that is propping up America's banks right now.

[old guy]

in my 2 or 3 decades of practice I have been involved in three interferences and derivation was the issue in two of them and the third was over quickly

[CaveMan]

Mooney, you are so cynical as to be beyond help. I hope your mother loves you. Mooney, meet Doctor Si Koanalyst - he's going to be chatting with you for a while.

As for empirical data, just look around. How about you give me a list of major companies in Europe, Japan, China, and wherever else, that are less than 10 years old, that started from a venture small venture. Even Cisco's substantial growth is right around 10 years. Go back to 20 and they weren't even around.

[CaveMan]

Dear Wanker, I just checked around a little. Just about every list of startups were predominated by U.S. companies. There were some that that were of European origin, but not many, and of those it seems as if they were interested in U.S. patent protection. I wonder why?

[examiner#6k]

"Really?"

rly

[hp]

FTF has been a good idea, for a long time (you think the rest of the world went loco, for no reason at all?). That dang constitution. If only I was Emperor of the Planet - then things would be different.

[examiner#6k]

Oh, and can I get the best and brightest legal minds on this matter right fast?

I have an application that reads on a prior art ref (US pgpub). The art is available under 102e by it's filing date, however it also claims to be a continuation of a PCT filed in Denmark which published nearly a year before the filing date of the prior art ref and more than a year before the applications filing date. The PCT was designated in the US and was translated within a year (i.e. the prior art ref is in English).

Applicant states that since the prior art ref is only avail under 102e then he can 103 exclusion it (prior art ref is assigned to his corp). The thing is, the PCT published in German more than a year before his filing date so I say he's wrong, and furthermore that I can use the prior art ref itself in the rejection instead of the Denmark PCT because it is merely a republication of a prior publication except it's in English.

So, question is do I have to get a translated copy of the Denmark PCT and use that rather than the prior art ref in order to make the 103 rejection proper or can I just use the prior art ref and deny his 103 exclusion since technically that line of applications published 1 year (via foreign publishing) before his application? Is the fact that the prior art ref is merely a translation of the Denmark application relavent at all? Would FTF affect the situation any?

[CaveMan]

By the way #6K, what I think you meant to say is that you have an application *with claims* that read on...

Sorry, to the best of my reading of the law as it now stands, English language publication is required for 102(e) art and its international progenitor. That being said, since 102(b) art can be any language, I'd say cite the 102(b) publication directly and get yourself home in time to watch the Simpsons. Forget about FtF.

[BSN]

"There were some that that were of European origin, but not many, and of those it seems as if they were interested in U.S. patent protection. I wonder why?"

Perhaps it was because the US is a large market?

My goodness, there is some utter nonsense being talked in this blog. I don't have the figures to hand, but I suspect that a large minority of US patent filings have a foreign priority claim, ie were drafted under a FTF regime. Equally, a significant proportion of US filings are used as a priority claim in other jurisdictions, thus are subject to a FTF regime. The argument seems to be that these applications were all drafted in a rush to file, and therefore are more likely to be badly drafted and liable to be tossed out. Really.

The success or otherwise of a particular patent system cannot be measured, and any attempt is a waste of time. One can refer to the all-knowing wisdom of the Founding Fathers, but frankly this wisdom is not evident in many aspects of American government. One can look at the success rates of start-ups, but surely this says a lot more about culture and access to capital (and isn't that working out well) than it does about the patent system.

The rest of the world would like the US to move to FTF because it makes life much simpler for us - we don't have explain to our clients how the rules are different for one country. Apart from that, we don't really care. Frankly, you should move to FTF because it's a vastly more sensible, workable system ... but if you choose to let ignorance rule, that's your call.

[MaxDrei]

Well said, BSN. The value of an anonymous blog is that correspondents feel free to divulge their prejudices. We from outside the USA can better serve clients who seek to participate in the US market when we have followed the "utter nonsense" above, to gain some insight into those prejudices. For me it is educational (and a good laugh) to read what Americans imagine will happen, when USA joins ROW and adopts FTF. BTW, the Framers meant FTF all along. They stated, wisely and uncontroversially, that the Government should provide a sane and fair system of IPR, but left the practical working detail for others to write. America, now's your chance to do that job right at last. Stand on the shoulders of others, why don't you? Why don't you take a look at the scheme of substantive law of the European Patent Convention. It's a practical fusion of English patent law with that of ROW. And it works. For the rest, see BSN above.

[examiner#6k]

Unfortunately Cave I had used the 102(e) without thinking about the whole 103 exclusion (because the bastards didn't put that they owned on the front of the other pub, I ha te when they do that, I've got to start looking up every 102e ref in edan now just to see if it's avail for 103) so now they're making a 103 exclusion claim, so it's either go nonf and cite the WO or final and stick to the 102(e), since I don't believe that the claims would have been properly rejected unless there's any kind of back publishing rule around. Of course, they did amend, but I don't think it's relavent if they make a 103 exclusion when they hadn't even said they owned the reference (on the reference itself) yet, which is btw, dam near the most bith ased thing you guys do out there imo. I'm working a long night tonight to get a lot of amends done so I can maybe not get less than 95% at end o quarter. But of course I keep finding 102's on all the amends I want to allow. I swear to goodness, sometimes this job is decent, sometimes it's like, why in the heck is everything going against me atm? Anyway back to work Imma finish this other guy off tonight. It's amazing how easy a rejection is to write with a 102b on everything compared to even a few 103's mixed in. I might just do one big super sentence just to be a behind, since the other guy 103 excluded and put me in a bad mood. I do love boiling 5 pages of claims down to a 1/2 page rejection though.

Thanks though

[examiner#6k]

"suspect that a large minority of US patent filings have a foreign priority claim, ie were drafted under a FTF regime."

It's barely a minority and that will hit a solid majority sometime in the next 10 years I bet. When I first got here I was astounded at how many had FP, it's just now evening down to under 50% for me personally and I know many other examiners have similar numbers. And frankly I can't say they're any worse or better than the american filed ones except for the occasional horrible translating job.

[JohnDarling]

"because the bastards didn't put that they owned on the front of the other pub, I ha te when they do that, I've got to start looking up every 102e ref in edan now just to see if it's avail for 103"

Uhm, that's your job. You may want to review MPEP 706.07(a), which states, "When applying any 35 U.S.C. 102(e)/ 103 references against the claims of an application the examiner should anticipate that a statement averring common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e)."

That's M-P-E-P. Stands for Manual of Patent Examining Procedure. Lots of useful tidbits in there. Check it out. It may even be available on your desktop.

BTW, you can search the assignment records too. Let me know if you need some help, because it doesn't appear that anybody over there is aware of this either.

"so it's either go nonf and cite the WO or final and stick to the 102(e)"

So you're going to stick with a rejection that the applicant has already established is legally improper? And you're going to make it final?

You certainly are amongst the best and brightest over there.

[Lionel Hutz]

Max,

"Normal not yet adult persons pursue happiness by killing small defenceless animals."

You mean Future Serial Killers, don't you?

Are you really serious? What kind of environment did you grow up in?

[A European Perspective]

Reading some of the comments on here you'd think that the world outside of the USA is limping along on the edge of disintegration crippled by their anarchic legal systems and collapsing economies. I wonder whether these posters have ever been involved in filing non-US patent applications, never mind whether they have ever left the USA!

For Example

Caveman: “5. Since when is Global Harmony such a great idea? The places that have first to file (virtually everywhere but the U.S.) are places where there is very little entrepreneurship outside the Government sponsored corporation. The idea of incubating small companies is non-existent.”

That’s right there’s “very little entrepreneurship” outside of the USA, and there’s no-where else in the world that small companies can thrive!

David Cracappa: “First, if harmony is so good and the rest of the world wants it, let the rest of the world adopt our system.”

Somewhat insular viewpoint don’t you think – if your system is perfect then how come each and every country that has reviewed the two systems over the years has come down on the side of FtF being the most practical and legally sound system. America isn’t always right you know!!

No One in Particular: “A first-to-file system would be a disaster for creative work at companies, especially large companies.”

Yep, creative work only happens in companies in the USA!

And

“A first-to-file system would be a bonanza for the Patent Office. There would be lots of Provisonal Applications requiring no work on their part and lots of badly written patent application that would be easy to reject.”

If you look at patent applications in established F-to-F systems (such as the UK and EP) you’ll find that there’s no evidence at all to support the over simplistic argument that F-to-F leads to badly written patent applications.

[tired pat atty]

ex #6 is indeed a scary one - I can picture him rolling the steel balls in one hand while typing away with the other, when he should probably be working, if he is indeed that overloaded! I'm glad I'm getting out of the business!

[CaveMan]

Dear European,

I think you clearly took my remark out of context. I said there is little entrepreneurship outside the government sponsored corporate or capitial markets. There seems to be some amount of bona fide private investment in places like the UK, Germany, Switzerland, Israel, for example, but the vast majority of the ROW such as Scandanavia, Asia and the like seem to have severely limited small venture incubation (unless we're talking about mom and pop opening a sandwich shop). Please give me an example of a European version of Cisco and I don't mean Cisco Europe.

[JohnDarling]

"ex #6 is indeed a scary one"

Multiply him by about 3,000, all marching to the quality = reject, reject, reject drumbeat and the future is indeed bleak.

Thank goodness for attrition!!!!

[Mark Pitchford]

I wonder how many "breakthrough" patents have foreign priority versus those developed in the US.

Small inventors and entrepreneurs tend to have the breakthrough ideas, and they also tend to disclose before filing and take longer to seek patent protection. FTF hurts them. That is not what we want here in the US. The rest of you can have your FTF and corporate favortism. My favorite cases are small inventors who are excited about their new ideas. I'd really prefer to not turn them all away because they told their parents or friends about their idea.

[Lazarus Long]

JD, you are incorrect in your statement (or at least your INTERPRETATION is incorrect) of
"Uhm, that's your job. You may want to review MPEP 706.07(a), which states, "When applying any 35 U.S.C. 102(e)/ 103 references against the claims of an application the examiner should anticipate that a statement averring common ownership at the time the invention was made may disqualify any patent or application applied in a rejection under 35 U.S.C. 103 based on 35 U.S.C. 102(e)."

While the quote may well be accurate, what you imply is not. The examiner has no way of knowing if the application he/she is working on was, AT THE TIME OF INVENTION, designated for assignment (sounds like a utility infielder :) ) to the same company. That is evidence/facts that the applicant/lawyer/assignee would need to provide.

The proper course of action is to use the reference and make the applicant/lawyer come in with the needed information to overcome the reference. Simply the fact that the prior reference is currently assigned to the same assignee based on the front page of the patent (or the assignment page) is not sufficient. Similarly for the information from the application. The assignments are usually at the time of filing.

That said, if the examiner is doing things properly, once they make that rejection they should ALSO make a "back-up" rejection (if reasonable art is available) based on other art that is not from the same assignee (or qualified under 102(b)). This way, there should not be a need to make the 2nd action non-final when the applicant easily overcomes the 1st rejection.
If no other reasonable rejection is available, the examiner should either indicate in the action such, or even better, just call before sending the action out & ask the lawyer to submit the info & then allow the case once they do.

The preceding is what I have had my examiners do & what we do in our art unit.

thanks,

LL

[MaxDrei]

Dear Lionel Hutz, you ask if I am serious about the pursuit of happiness (that old inalienable right that all men of the USA enjoy) coming from killing small defenceless animals. I know some US patent attorneys who are happiest when they are off shooting ducks. Which part of "small defenceless" do you take issue with? Come to think of it though, I have no experience in taking on the (surely extra large) ducks that hatch out in Texas.

JAOI is right: just because USA had a good 20th century for innovation doesn't mean that its 21st, with the same patent law, will be as good. As the EPO President never tires of pointing out, the race these days doesn't go to the biggest or strongest ones, but to the ones capable of adapting to change. She is aiming at her European audience, of course.

[MaxDrei]

Caveman, I'm not a telecoms man but can you comment on that field. I think of global standards, and global leaders like Nokia and Samsung. Are they all American underneath, or just flash designers of housings? I'm interested.

Then again, there's auto technology. I didn't know that BMW, AUDI and Mercedes were American , or in public ownership, or that their technology was copied from American stuff. Or are these two industries so trivial as to be not worth attention?

I don't know why I rise to the challenge though. All this anecdotal stuff is pointless, as the European commentators are pointing out.

[Just an ordinary inventor(TM)]

Dear Max,

I am again amazed, I thought your penultimate post was also terrific. You keep posting like that and surely you will help me accomplish my quixotic mission, to galvanize We the American People comprising the intellectual community et al. to aspire to fulfilling our destiny to lead – our nation was founded by Leaders, not followers.

Thank you again for your inspirational post. Please keep ’em coming and you may win the American Patriot Award bestowed upon a Foreigner who helped American realize it destiny.

[JohnDarling]

LL,

You're wrong again. If you're using 102(e) art, you should anticipate that it may be disqualified. Exactly as the MPEP says you should. And you should do a simple review of the ref's INPADOC family to see if it has a family member that may qualify under 102(b). AND YOU SHOULD DO THAT BEORE ISSUING YOUR FIRST OFFICE ACTION.

They don't teach you how to do something as simple as check espacenet over there?

It's clear 6k is not in your AU.

BTW, what do you think of his "tactic" of "final and stick to the 102(e)"? Where did he learn that? Is it possible that the RCE gravy train riders over there suggested it?

Should I have to call his SPE or TC Director to request that nonsense like that not be tolerated?

"That said, if the examiner is doing things properly"

Thanks for the chuckle.

[Peter Hoffmann]

All this talk about what the rest of the world does is bogus. Most of the patent laws in PCT countries are carbon copies of the French/German systems which were formulated to protect domestic industries with no consideration of awarding a patent to the individual inventor which is uniquely American and completely alien to all other countries. The German patent law which still has cartel protective stipulations going back to the Third Reich served as a model to the European patent law which in turn was copied into Chinese and Japanese patent law. An ironic situation develops as we harmonize with Hitler. Why would we give up on the best protection of the individual rights in favor of fascist companies and countries. We are the place where the rest of the world in order to succeed has to sell at least 40% of their production be it cars, drugs, or anything. Why would we kill off the only decent protection an individual (not only American by the way!) can get to build and contribute. Patents should not be a tool of the government to control and manipulate for social engineering. If we do not keep our way of life in favor of a change to cartellism and mass then we are obviously sliding into the rule by unelected commissions and the so-called international law, mostly inimical to our system of laws. Incidentally, foreign inventors have also thrived under our system. After winning all those wars, we are now ashamed of winning and leading. What a perversity.

[Lazarus Long]

JD, sorry, you are wrong on the interpretation, not I. I did not say NOT to check what the CURRENT assignment is. I said that "The examiner has no way of knowing if the application he/she is working on was, AT THE TIME OF INVENTION, designated for assignment ... to the same company. That is evidence/facts that the applicant/lawyer/assignee would need to provide."

And I followed by saying the examiner "should ALSO make a "back-up" rejection (if reasonable art is available) based on other art that is not from the same assignee (or qualified under 102(b))."

What is wrong with any of that??

Yes, the examiner should check for other related prior art; inventor searches; assignee searches (though try doing that for IBM or Xerox type assignees); and foreign related cases. (preceding not intended to be a comprehensive list, in case you want to say I left out some other source). Nothing I said ever indicated that the examiner should not do this. Try rereading what I did say, please.

And, "no", I am pretty sure 6k is not in my AU & probably not in the TC. Sounds more like 2100 or 2800. Probably the former. Based on what I can make out of his "explanation", above, it does sound like his position of maintaining the 102(e) ref. when it was overcome is B$ & he should be called on it by the lawyer in the case. A pre-appeal would be the best way, though a call to the SPE might help in that case if he is not response to reconsideration after-final (depending on the SPE). My general opinion is to at least 1st try to convincing the examiner why they are wrong (if they are). And only go higher if they are clearly out of line. If it is a matter of differing opinions on art, for example, no, going to the SPE is not the right option. If they are not showing for interviews, I would drop the hammer down.

thanks,

LL

[JohnDarling]

"A pre-appeal would be the best way, though a call to the SPE might help in that case if he is not response to reconsideration after-final (depending on the SPE)."

Why should applicant have to pay $500 to get a clearly improper rejection withdrawn?

A call to the SPE??!!! Now I am ROFLMAO. In all likelihood, who signed the OA? If I request reconsideration after final, and it's still not withdrawn, I should call the SPE??

Please let me know where you get whatever it is you're smoking, because I want to get me some too.

[MaxDrei]

From the land of the Hilmer Doctrine comes Peter Hoffmann's particularly rich assertion that ROW is the one with the protectionist statutory provisions. Could Peter by any chance particularise those provisions, or has he (like so many others) been simply brain-washed? If he could actually perform that small service, that really would be educational for me.

[Lionel Hutz]

Again,

You people really need to examine FTF and FTI against actual data.

(1) It will make very little difference generally. Yes I understand they sound different, but if you understand 102(g), you will see that FTF will not make a difference in the vast majority of cases.

(2) Small companies and independent inventors are not going to be disadvantaged (at least in the electrical/mechanical/software arts). They may be disadvantaged in chemical/biotech, but those areas are not mine, so I will not venture to guess.

(3)You still have a year grace period for your own publications.

This is worse than the Festo chicken littles.

[Lazarus Long]

JD, depends on whom you are dealing with. Our SPEs would do something. And a LOT of cases are signed by the examiner or a primary, not the SPE.

And I notice that you did not respond to the 1st part that started this discussion...

thanks,

LL

PS Don't smoke - bad for the health ;)

[Just an ordinary inventor(TM)]

Dear Peter Hoffmann,

I love you, and I never thought I’d want to say that to another man.

www.patentlyo.com/patent/2008/03/moving-to-first.html#comment-107545552

Ladies and Gentlemen, especially those comprising intellectual property People, the above link is a must read (it goes to the sixth comment above).

THANK YOU Peter Hoffmann!

[CliveFenster]

I work at a small- to mid-sized company. We act as though in a FTF system as it is. While I've instituted more formalized record-keeping to preserve evidence of conception/diligence, we just haven't the resources to expend on interference proceedings. SO we try our hardest to get in the door first and be the senior filing party, forcing our competitors to decide whether to file second, provoke an interference, and try to establish a position earlier in time.

So long as I can keep my priority claims, we're OK with FTF. Or am I missing something?

[MaxDrei]

Dennis, can you tune your Spam Filter to exclude the irrelevant words "harmonise with HITLER"? When I write an innocuous European "stewpid" I get a bounce back, but he can write HITLER with impunity.

"Peter Hoffmann" might be just a naughty little boy, who (in the words of the nursery rhyme) "only does it to annoy, because he knows it teases" but, all the same, he should stop it please.

Conversely, Mr Hoffmann should continue with self-delusional feel-good pronouncements like "commercial success is impossible for you unless you can sell >40% of your production inside USA". Who sold him that line, I wonder?

[JohnDarling]

LL,

Here's my answer to your first part: If 6k had done his job, he would have found that published PCT that he claims qualifies under 102(b).

I get garbage like that all the time. Here's a rejection. Great, I'll disqualify this reference (with common ownership, certified translation of priority document, whatever), politely note how the rejection is overcome, and earnestly solicit my notice of allowance.

Oh, here's a new rejection with a new reference that was never of record before.

What? They don't teach Rule 104(c)(2) over there? Or MPEP 700? How 'bout MPEP 900?

No. I guess they don't teach those things. Too busy hammerin' home that quality = reject, reject, reject.

But remember, 32+ month pendency and 760,000+ case backlog is 100% the fault of applicants and practitioners.

I don't smoke anything stronger than a cigar once in a while. Goes great with bourbon.

[Sir or Madman]

"You people really need to examine FTF and FTI against actual data.

...

This is worse than the Festo chicken littles."

Cheers to Hutz for being the voice of reason in a exceedingly petty and pointless argument.

This one is right up there with Airbus vs. Boeing, butter vs. margarine, two spaces vs. one, and Star Trek vs. Star Wars.

There are countless other things more deserving of all this passion.

[Andrew Ryan]

Is an inventor entitled to the sweat of his brow?

No, says the man in the boardroom; it belongs to those who can profit the most from it.
No, says the man in the University; ideas just want to be free.
No, says the man in Washington; it's too much of a bother.

[Just an ordinary inventor(TM)]

Dear Max,

With all due respect, it is you who are the odd man out.

Peter Hoffman speaks knowingly and wisely.

www.patentlyo.com/patent/2008/03/moving-to-first.html#comment-107545552

[Michael R. Thomas arguably the worlds only inventor of signifence.]

the shift to first inventor to file will do some to create global harmonization in invention however for true harmony global patent issuances need to occur in each country simiultaniously.As the master inventor lives here the best issuance country is here. making Patents more dificult to obtain stiffle inovation determination of important patents by marketability or unmarketability determination ensures the incentative to create is maintained wile sting or unmarketable patents never issue.

[JK]

We are the few, if not the only one, that uses "miles", "inches", "pounds" and not "kilometers" or "cms" or "kgs". Does that mean we have to change that.

If harmony is that important, do you need to have the Japanese to drive on the rightside of a road as most countries do?

We have our FtI. We stay with it all along. We are used to the system, and we have our mindset and adapted it well.

Why have to change...

[EP]

This comment board doesn't cast Americans in a good light - I find the fact that a bunch of supposedly educated group of people can be so arrogant and jingoistic distinctly distasteful - but then what would I know, I'm only a "second rate" citizen (i.e. ROW).

Firstly, isn't the patent meant to be a bargain between the state and the inventor? That bargain being a monopoly of 20 years in return for the DISCLOSURE of the invention. If you haven't filed, then you haven't disclosed and fulfilled your part of the bargain. In other words, FtF rewards those who disclose first and fulfil their part of the bargain first.

And don't tell me that the US doesn't work like that. Your 102 is worded as it is (excluding use or oral disclosures in foreign countries) so that the "inventor" who brings the benefit of that invention to US society first can be rewarded.

Secondly, as pointed out before, America is using a FtF system because a large number of applications will serve as priority for foreign applications - so if you're not already hurrying your inventor then I suspect you're not doing them too many favours.

Finally, the comment that keeps being repeated is that FtF this will affect small inventors, i.e. a FtF does over the small inventor, but there are plenty of small inventor outside of the US that have been able to use the patent system and succeed. E.g. the UK has had a number of small inventors that have been able to use the FtF system and still win out, James Dyson of Dyson vacuum cleaners anyone?

Also as an aside, can someone please give me a top 10 list of patents filed by small inventors in the US that have been ground breaking/seriously profitable, particularly in the last 10-20 years? (Remember Lemelson can't really count as a small inventor since he had the same financial resources as a SME). I'd love to know the difference between the US and RoW because reading the comments on this board, you would think that the US owes its global position to the small inventor...

[Lionel Hutz]

EP,

I did not realize that Dyson was a recent patentee. I bought a Dyson. Awesome vacuum.

That is all.

[EP]

Indeed:

http://en.wikipedia.org/wiki/James_Dyson

[normski]

Some of the comments on this thread are worrying. I get the impression that many of the commentators are happy to rely on the first to invent provisions and the grace period.

So what happens when your client invents something, you take your time drafting the app and he discloses his invention in the meantime. You then file a US app. 12 months later he says, 'things are going well, i want protection overseas too'.

What do you say? Do you tell him that in most of the ROW any app/patent will be invalid? Do you just file anyway and take his $$?

There must be so many ROW patents with US priorities that are invalid.

Surely, because a client could always decide to file overseas at the end of the Convention period, you should never ever rely on the grace period or first to invent provisions.

Just my 2 cents worth.