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Rrrm, sorry about the confused attribution. Only the first quote was Ken Brooks….
Ken Brooks:
“Were the first to file system implemented while maintaining the best mode requirement, it will place U.S. inventors at such a disadvantage I would contend that I could render the statue invalid under several constitutional grounds”
Nope, none of the stuff you mention would have any effect on any patent statute. Under the US Constitution, the federal government has no obligation to issue patents at all. Given that, it is unlikely to be required to have more than a rational basis in any of its rules, unless they’re facially discriminatory.
However, there is one key rule under the Constituion first-to-file system *would* have to deal with: exclusive rights can only be secured “*to inventors*”. Accordingly, the proof that the first-to-file was in fact an inventor will remain essential.
“In other words, does an Article III tribunal have the power at Summary Judgment to determine that a monopoly granted in accordance with Title 35 of the United States Code still fails to comport with Article I, section 8, clause 8 of the United States Constitution. In this manner the patent could be stricken by the court. It should be borne in mind that there should never be a presumption of validity when a patent is stricken on a constitutional challenge.
I believe that the Courts would very much enjoy rendering lofty Constitutional opinions than the more mundane opinions of this prior art reference was missed and that Expert was that etc. In my opinion it would be a much cleaner way to clear up much of less than virtuous patents. the mess that is being created by the USPTO. ”
This is a really excellent idea. Unfortunately the “progress of Science” clause is generally treated as surplusage by the courts. đ
“I still am amazed to read cases like O’Reilly v. Morse where Morse conceived of his invention in 1832 on a boat coming to America, but took eight years before he filed his patent application. During those eight years, he worked on his invention to develop it (he was a professor). Others independently invented virtually the same thing in the interim and filed or published first. Morse lost his overseas patents because of this and his own publications, but prevailed in the US due to his early invention dates.”
Ah! But the purpose of the patent system is largely to promote the *publication* of inventions. Trade secrets can be retained forever, as an alternative. That is the “patent bargain”. Accordingly, from the utilitarian point of view, those who published first should get the rewards, and Morse should have published earlier — and the incentive system should be structured to encourage him to do so. The “Progress of Science and the Useful Arts” is generally assisted by fast publication so that people can build on existing knowledge, not by retaining something as a trade secret for 8 years.
You’ve raised a number of very interesting things to think about.
http://www.inventingconsultantcreator.net
O sht. He’s in your internetz creating on your consultants.
Regarding director Kapposâ references to the reform bills minimal changes to the process for inventorship determination that we now use, the reality is that the system is in a state of awarding patents into the incorrect name 100% of the time or nearly 100% of the time in instances where valuable patents are at issue. These patents of course are the only ones that are worth filing and the only ones that will result in new products coming onto the market. The fairly tale of simultaneous non-collaborative invention needs to be realized and be the subject of necessary legislation changes in addition to the 30 or 40 other methods that inventors are cheated out of their inventions and that are not dealt with in the present legislation. See our website to see all of the needed changes and why the present proposals are absolutely despicable. The fear of losing an invention to the deficiencies of the present and proposed system of inventorship determination represent an extreme detriment to human advancement through innovation and needs to be corrected immediately. Also civil rights violations of inventors must be corrected so they can breathe free as our other citizens do.
link to inventingconsultantcreator.net
Lionel, tricky question. Are you asking me to choose a jurisdiction, today, that will be the “most important” when the term is coming to an end, 20 years from now, and the subject matter is a blockbuster pharmaceutical that will keep folks alive? There are 600 million people under the jurisdiction of a European patent, and Europe has things called “supplementary Protection Certificates” that extend the term of pharmaceutical patents beyond 20 years from filing.
And then there’s China, with more than double the number of folks willing to pay to stay alive.
Conversely, the USA does triple damages and requires infringers routinely to “bet the farm”. So, having a patent in the USA opens up delicious opportunities to intimidate whole industries, that are denied to patent owners elsewhere in the world. That’s one reason why, historically, the US jurisdiction has been so “important”. Of course there are plenty of other reasons. That’s the trouble. It’s all so complicated, to separate out one reason from all the rest.
Max,
I believe if you look at my prior posts, I am not some raving jingoist. I also support the US moving to FtF.
Having said that, would you actually argue with the statement that the single most valuable country in which to obtain a patent is the US? And if so, why.
Let’s be clear, Mr Goodloe. FtF can’t eliminate fights between rival parties, who both invented much the same thing, at much the same time. There will (I hope) be just as big a fight with FtF as with FtI. The issue is the point at which investors can “take a view” which side will prevail in the end. With FtF, the docs that will decide the matter are all out there in the public domain, 18 months after the respective filing dates.
As to “interesting”, life’s quite “interesting” enough for me under FtF. I don’t really want it any more “interesting”. Isn’t that the old Chinese curse “May you live in interesting times”?
With FTF, life won’t be near as interesting…
link to americanheritage.com
However, it is not clear that FTF would have completely eliminated disputes over the scope of what was disclosed and claimed, and when… so you trade one set of problems for another set of problems…
Ned, Ron, reading Mooney prompts the thought that many people still doggedly insist that, on fitness for purpose considerations:
i) Betamax is “better” than VHS, and
ii) HD-DVD is “better” than Blu-ray.
Should we number you two amongst that number? Fitness for purpose is vitally important, of course. It explains why the dinosaurs got so big.
Are you therefore advocating that the USA should stay with HD-DVD?
But wait. Probably not, since it was invented in Asia/Europe wasn’t it.
These things are what one calls “standards” right? Like GAAP. That sort of thing.
Tell me, in a globalised world, how significant to a global player are these wretched “standards”?
The majority of innovations and new technologies are introduced by startups and new market entrants.
Gosh, that sounds nice but it smells a bit like crap, Ron. Are the terms “innovations” and “new technologies” defined? What exactly is a “new market entrant”?
How large is this “majority”? 55%? 80%? What? Over what time frame are we talking?
Zakaria: Is American Innovation A Thing Of The Past?
Answer: no.
But of course if the US government wanted people to discover more stuff, it should invest in education and research. Axiomatic.
Maybe get the helll out of Iraq and Afghanistan where we never belonged in the first place and cut the military budget in half. Take that money and invest it in improving education, providing research grants to scientists, and rebuilding and development of infrastructure. You know, the sort of investments that actually pay off and don’t involve killing thousands of soldiers and tens of thousands of innocent people.
Meanwhile, the “ordinary inventor” can stockpile ammo in his bunker in Idaho and develop exciting new iPhone “apps” for entertaining pet hamsters.
Ned Cases such as Ebay have dramatically undermined the value of US patents to the entrepreneur. Ditto reexaminations.
Oh, looks like Ned needs a kleenex.
Ned, I still don’t understand. FtF is a giving to inventors, not a taking. You are able to find a taking only by setting FtI as your origin from which the analysis starts, whereas I see an advantage, relative to the real baseline of free competition, and no patent system at all.
My US clients seem to be increasingly looking to Europe and Asia to make their profits. European industry these days looks East, as much as it used to look West.
You write:
“…the ROW needs to patent in the US. You may not like it, but it is a fact.”
Hang on to that thought, by all means, if it comforts you. As for your tip, thanks but the amendment to 35 USC 104, all those years ago, did not go un-noticed by European industry.
US: it is interesting that all the famous US inventors pictured in the linked are the very type of inventor being today hammered by big business in the courts and in congress. Cases such as Ebay have dramatically undermined the value of US patents to the entrepreneur. Ditto reexaminations.
What did you expect, an increase in inventions?
But the conclusion that it is a falloff in funding by congress and by big business as being the cause of the falloff in innovation simply proves that the people writing the article have no clue, or they are talking to the wrong people — government and big business.
Now
The U.S. is rapidly falling behind in innovation. It doesn’t have that much to do with patent law or USPTO practice, but rather the commitment which the federal government and U.S. businesses have towards investing in R&D. A patentlyo article on that topic might be interesting, Prof. Crouch. See
Zakaria: Is American Innovation A Thing Of The Past?
link to newsweek.com
MaxDrei, if you disadvantage the inventor in any way to promote the interests of society, you are taking. This idea came from anon: the trade off for giving the inventor less security is the benefit to society of early disclosure. He favored it. You seem to as well.
Back to Rule 131, it provides for a declaration of prior invention that can remove a reference not a statutory bar. Under the revised Section 104, anyone in a WTO country can prove prior invention showing acts in their own country. Europeans should be aware of this and act accordingly.
In truth, the ROW the world is now first to invent just as much as is the US because the ROW needs to patent in the US. You may not like it, but it is a fact.
You know Ned, that night follows day. But do you know that FTF “forces” premature disclosure, as night follows day? The FTF inventor doesn’t have to file on Day One. She can wait till she’s ready. As long as she likes. It’s her judgement. And she should anyway wait, at least till she’s got a disclosure that enables the scope of the claim, As I keep saying, if she goes before that point, she hands the invention on a plate to the public.
And how do you know that, with FTF, there would be less innovation in the USA? Do you really think US inventors wake each morning and think “OK, we still have FtI. So, I’ll do a little inventing today” whereas after FtF comes in they would wake up, ask if it’s still FtF and, if so, go back to sleep again? I had thought the US inventor was single-minded and indomitable and would not be so easily put off but would instead adjust to the new world of FtF and go on inventing at least as incorrigibly as before.
Dr K, does your Paper on Canada help us with this point. (Sorry but I’m reluctant to cough up my real identity).
Ned, no, I don’t have much experience of instructing US lawyers to prosecute at the USPTO. I’m in here to learn.
And what’s all this “taking” guff? Nobody’s taking anything from anybody, as far as I can see. Suppose there was no patent system at all. Would there be a “taking” then? With FtF, is there i)more or ii)less “taking” than with no patent system at all? You’ll have to spell your theory out a bit more clearly for the likes of me.
MaxDrei and anon, the point of the “brothers” parable is to point out the subtle effects of taking from the inventor and giving to society. As MaxDrei clearly pointed out, FTF systems force early disclosure in exchange for rights. We have tried to point out how early disclosure hurts the inventor by example and by logic. It hurts the large company less, because R&D is not closely coupled to protection. Thus the large company argues that FTF is the way to go to “harmonize” with the ROW. They are not in any position to understand let alone argue against the entrepreneur. But they do, nonetheless.
Circling back, FTF gives to society and takes from the inventor. In any system, the more you reward society by taking, the less you get from the source and the less society has as a whole. It is provable by mathematics and is observable in everyday life.
One can therefor prove mathematically, I suggest, that FTI systems are superior to FTF systems in terms of the number and quality of inventions produced.
MaxDrei said: “I personally won’t mind if America stays with FtI indefinitely. I see that as reducing the chances of Americans being in a position to enforce their valid patent rights outside the USA. Americans file too late, you see.”
But — the American or anyone else in a WTO country who properly keeps track of invention dates — gets the patent in the US. Today, US patents are by far the most valuable in the world (but the big companies backing FTF and other “reforms” are working on that “problem.”)
It is weird, but companies located outside the US, in WTO countries, can now take advantage of the US first to invent system. Inventors in WTO countries can prove prior invention. If enough of them do (that is if we ourselves do not kill first to invent in the US) and if they perceived the advantages of a first to invent system, perhaps they too will lobby to change their own systems to FTI.
MaxDrei, I know you are not a US patent attorney. But have you ever managed a US case on behalf of a European client? Have you ever considered filing a Rule 131 declaration showing prior invention in Europe?
Dear Dr Katznelson, a pleasure to discuss with you. Thanks for a stimulating response. Yes, perhaps I should be scribbling elsewhere – but it would surely not be as much fun.
We are arguing about rights to whomsoever invented “it” first, or filed for “it” first. But what is “it”?
You speak about FtF forcing filing before one has identified:
“..the claims one ultimately requires”
which suggests that “it” is still not evident, even when one files at the PTO.
I see the advantage of FtI for the start-up, in that it has the privilege to take as long as it needs, before having to file, disclose, and define “it”. I personally think (but then I would, wouldn’t I?) that this advantage is outweighed by those who are actual and potential employers of labour in the USA, the generators of national wealth, for whom the years of legal uncertainty are destructive of confidence to invest. I think a privilege of being able to take as long as one pleases is a privilege that people carelessly abuse.
So, doesn’t society (the sponsor of any patent system) need a mechanism to keep that abuse in check? Yes, I know that in an interference the first filer is the senior party but, in reality, that’s not a very effective incentive to file any earlier, is it?
I don’t know whether the transaction costs of FtI hurt the American economy more or less than its deferred disclosure privilege helps America to innovate. I’m not an economist.
I personally won’t mind if America stays with FtI indefinitely. I see that as reducing the chances of Americans being in a position to enforce their valid patent rights outside the USA. Americans file too late, you see.
Sorry about the link not working. Iâll be happy to send you a copy if you contact my email (provided on my Selected Works site).
MaxDrei: âI repeat over and over again that, under FtF, filing too soon, when the disclosure falls short of enabling, will hurt the inventor and her investors. The other fella, filing after her, with a disclosure that is enabling, will get the monopoly, not sheâ.
On that we agree. However, you do not seem take this observation to its logical conclusion. The trouble is, how does one predict up front when a filing is âtoo soonâ and which disclosure is mature and enabling for the claims one ultimately requires? FTF increases the risk of missing some of these predictions, particularly for small startups that cannot afford to file more frequently. Do I understand correctly that you concede your point on âearly disclosure benefitâ of FTF? If not, please address specifically my point on reduced incentives to disclose under FTF due to the shifts in risks that I identified.
You and others also appear to assume that small U.S. startups need to file internationally to succeed. We do not. For example, with 10X costs for obtaining a European patent compared to small-entity costs for a U.S. patent, we often forgo foreign filings that we cannot afford and the FTF consideration is irrelevant. No one is trying to make you switch to FTI – you can keep your FTF in your jurisdictions and harm your small businesses (if any are left). The argument here is not about whether the ROW should move to FTI – it is whether America should transition to FTF. In considering this question, one cannot âsteer clear of start-up considerations so as not to stir the hornets’ nest again.â If you do not feel equipped to address this segment of the American economy that is central to Americaâs lead in innovation, than perhaps you should steer clear of this debate and begin your own thread on the merits of keeping the ROW under FTF. Given the vastly different legal systems that are impossible to change, I may even support your positions on that because your arguments make much more sense in those economic settings.
Naah. Again the Link didn’t work.
Dr Katznelson, I tried to link to the Paper on Canada but the link failed and I reported that failure to you on this site. But I will try again now.
I don’t doubt that your “tipping point” is different under FtI. Again, in an earlier posting, I said I would steer clear of start-up considerations so as not to stir the hornets’ nest again.
ROW is not going to switch to FtI. So long as issue of an optimal US patent is your only consideration, take as long as you like to file your app. But, if your investors also want a monopoly anywhere else in the world then, as soon as you have enabled your invention over the scope of your claim (but not one day earlier), think about filing at the PTO.
I repeat over and over again that, under FtF, filing too soon, when the disclosure falls short of enabling, will hurt the inventor and her investors. The other fella, filing after her, with a disclosure that is enabling, will get the monopoly, not she. I can’t remember your refuting me on that. Instead of complaining that I don’t address your points, why don’t you tell me where that statement is flawed, please.
MaxDrei, you keep raising the early disclosure âbenefitâ of FTF every place. When you receive a direct answer explaining the flaws in your argument, you ignore it. Please respond to my post in another thread.
link to patentlyo.com You can respond here.
You and âAnonâ miss the adaptive behavior of applicants in the face of FTFâs perilous deviation from the patent bargain. By reading that post, you will also recognize that NALâs analysis above is incomplete, as it keeps the trade secret variable as a âconstantâ. It is not, but not in the direction you posited. Contrary to your âtheoryâ, under FTF, trade secret appropriation paths will actually displace some disclosure that would otherwise take place in an FTI system. This is because in its âbeneficialâ push for early disclosure, the FTF system causes an unintended deviation from the patent bargain. Because of the âraceâ with incomplete information, it forces applicants to prematurely disclose much more information than that relevant or necessary to ultimately support the required claims, putting startups at much greater competitive disadvantage compared to incumbents. Although many of the abandoned applications under FTF would not be relevant in supporting ultimately required claims, they will be relevant to competitors in obtaining information and trade secrets that would otherwise not be disclosed, had the applicant had more time for vetting and developing.
Here comes the part you ignore: Have you been in a startup having to make the decisions on what to disclose in a patent application and what should remain a trade secret? Have you done this in an FTI environment? We do this at startups all the time and we balance probabilities and expected returns from both appropriation alternatives. Our tipping points may be different than that of larger incumbent firms. Under FTF we would stand a greater chance of making the disclosure without getting our required claims. As a result, our bias would be to forgo disclosure and patenting in cases that unfortunately would otherwise later prove important. Under FTI, our calculus is done later in the development process and is based on more information pertaining to the important inventions and on lower perceived risks for entering the patent bargain. In due course, we disclose only that which is required to support our ultimate claims â no more and no less. Thus, we are currently more comfortable in disclosing and patenting. FTF will upset this balance, as the risks of more disclosure could not be properly offset because of the reduced likelihood for obtaining patent protection. Thus, there will be relatively less disclosure from startups and new market entrants who risk more by disclosure. Disclosure from large incumbents will increase, but with reduced quality. Read the McGill University study on the 1989 Canadian transition to FTF – you will learn something from real empirical facts that contradicts your early disclosure âbenefitsâ of FTF theory. Anon, that will inform you too as to the question you raised.
You see MaxDrei, we talk past each other because you apparently speak from the European experience of established companies, who may not face risks of being crushed by incumbents. You may have no comprehension of what we go through in launching IP based startups. Even some of our outside patent counsels lack that comprehension. The majority of innovations and new technologies are introduced by startups and new market entrants. Americaâs lead in innovation is secured in large part by the American protection of small business and small entity inventors.
MaxDrei,
I’ll leave the further explanation of the “two brothers” parable to Ned, but wanted to express how pleased I am with your posting here – you’ve come a long way form the slinging crap to see what sticks approach, and I find myself enjoying your viewpoint. Kudos.
Maybe it’s like driving on the roads.
One brother lives in Japan, or England, and drives on the left. The other brother lives in North America, or in Europe, and drives on the right side of the road. Which side is “better”?
Will the world continue to function, if each brother drives for evermore on the side of the road he uses now? Can they survive and both prosper?
As long as they both remember what the Rules are when they visit their brother, surely.
What is the likelihood of the UK adopting the European standard on this issue? Zero.
“But the brother situation is like the trade off you suggest. You are giving less to the inventor and more to “society.” This actually results in less invention and hurts both.”
I’m not sure that’s a fair characterization. Since we’re talking about FtF vs FtI, not patent system vs no patent system (don’t tax the one brother vs tax the one brother, give him exclusivity vs no exclusivity), I don’t think you’re hypothetical quite nails it.
Let’s suppose both brothers are independently working on the same invention. Let’s ignore for the moment whether they are applying under FtF or FtI, and let’s just say that one brother likes to take his time (FtI), and one brother likes to get things done fast (FtF). The FtI brother will take longer to file, but theoretically/hopefully will use that time to further flesh out his invention, eventually resulting in more disclosure, and probably more scope to his eventual patent. The FtF brother is more likely to file once he has completed the base invention, and will disclose earlier, but probably with less disclosure than his brother, and also less scope to his patent.
It seems to me that both brothers have brought us something valuable, and although the FtI brother took longer to get it to us, he also gave us more with it.
I still can’t say which is superior, FtF gets society information earlier, and FtI gets society (likely) more (and possibly better) information. Both systems clearly have advantages, but I can’t figure out how anyone could objectively determine whether the increased information under the FtI system is worth the added time to get it.
For me though, the bottom line rests with something both American Cowboy and Max have hit on, which is that the transition would be extremely disruptive for everyone. Unless someone could find an objective way to demonstrate that the tradeoff is worth that disruption, I would rather not go poking bears with sticks.
OK, NAL. I did that. I’m no further forward. I read that both brothers, both of them:
“…can keep the whole fruits of his labors”
So, is Ned saying:
under FtI, and ONLY under FtI, the patent that the “first inventor” enjoys is unenforceable against the second inventor.
Or, when he writes:
“…you tax one and give to the other”
does he have in mind:
i) ANY and all patent systems are taxes, or
ii) FtF but not FtI?
Ned, NAL forgive me. I had jumped to the conclusion that Ned was saying:
ALL patent systems constitute a tax.
Sorry, I’m not there yet. More help please.
MaxDrei,
I think that you are not seeing the relevance of the “two brothers” story because you are conflating systems (patent and trade secret). You throw in the mix an option of NO patents, where the brother story does not have that option.
Of course, BOTH FTF and FTI are better than the trade secret option – that is a red herring. Try thinking of the “two brothers” story ONLY between the two options of FTF and FTI. In such comparision, your path of trade secrets is left on the shelf, and does not affect the analysis.
Ned, you write (as if it were incontrovertible fact):
“the more invention, more disclosure”
but that can’t be right can it? Think Google. Think MS. Think trade secrets, valuable know-how. If there weren’t a patent system in place, rational behaviour would dictate keeping as much know how as possible a close secret. In fact:
The more invention, the less the disclosure.
Now, which patent system gets the most info disclosed? Why, the one that secures the earliest enabling disclosure, by making that disclosure a more attractive option than keeping everything a secret.
How to do that? Why, by promptly enforcing the valid exclusive rights of patent owners. That promise alone, and nothing else, is what will tempt the disclosures out into the open.
I don’t see the relevance of your “two brothers” story, sorry.
Anon: “I think the question should be whether the tradeoff for earlier disclosure is worth the cost to inventors, not just a question of which system is best for the inventive entities involved.”
I’ve been thinking about this for a while now. I do not know exactly how one would determine the answer. Let’s think together.
For one thing, the exclusive period is supposed to be the trade off for the disclosure. So all we are talking here is about which system truly incents invention, because the more invention, more disclosure. If one increases the risk of no reward for the investment the inventor makes in developing an invention from a raw idea to a finished design one can, in my opinion, cause a significant decline in both invention and in development. Society would have earlier disclosure, but of fewer inventions. Nothing else makes sense here.
Imagine two brothers. You guarantee each brother that he can keep the whole fruits of his labors. You will, I submit, get a lot of labor from both.
Now imagine that you tax one and give to the other. I submit you will get less work from both as the one will not need to work as hard to make money and the other sees less reward in work. At some point, the one brother will all but quit and the receiving brother will have very little to live on. Both will be poor. Such is socialism.
But the brother situation is like the trade off you suggest. You are giving less to the inventor and more to “society.” This actually results in less invention and hurts both.
So, anon, you did ask the right question and the answer is clear. FTF is a very bad system both for inventors and for society.
Ned Brooks: Tho off-topic, I thank you for opining on the length of copyright protection. I totally agree it is way too long. I think the term should be limited in years from the original registration (or publication – tho that might be difficult to accurately ascertain). Either way, 50, now 70 yes?, years after death is extreme.
Re the patent for a method of swinging on a childhood swing: I recall it from about 7 years ago or so. I heard/read a rumor that the Applicant was officially a kid but his father (a P. Atty) wrote it to put on the kid’s “resume” to help win a prize. I think I (and many others)reduced that method to practice long before the application – too bad I didn’t publish đ
I wonder if there was a claim for New use đ
Another patent I saw once was for a hat for a horse – yes, amusement. I was amused – by the Fig of the horse with the hat, but had to wonder who throws away money on patenting such junk.
G’nite all.
Noise,
The problem is the Left Wing people usually back up what they say with facts and rational arguments. The Right rarely do so.
Posted by: Lionel Hutz | Nov 13, 2009 at 02:46 PM
LOLOLOL – you mean, like Malcolm?
btw – left wing, right wing, both extemes are marked by the inability to actually be rationale, while deluding themselves that ONLY they are rational.
Dear Lionel Hutz.
You wrote:
âTwocents is an id10t and a tr0ll. Anyone who thinks any part of the Obama administration’s goals are socialist is someone who is very ignor ant or slow. And I say that as a liberal.â
And you wrote:
âNoise,
The problem is the Left Wing people usually back up what they say with facts and rational arguments. The Right rarely do so.â
With all due respect, it is hard for me to believe that you could really be that mentally blind!
You have the judgment of a snail, no offense to snails.
Listen to Noise et al., they can steer you right if you will only take your totally biased blinders off.
Puhlease, pull your head out and smell the coffee!
puhlease…
Noise,
The problem is the Left Wing people usually back up what they say with facts and rational arguments. The Right rarely do so.
Sorry, Dennis. I can’t choose which of these two have the most impact because they are THE EXACT SAME THING!
“Prosecution: Eliminate the Grace Period for an Applicant’s own Pre-Filing Disclosures”
“Litigation: Eliminate the Grace Period for a Patentee’s own Pre-Filing Disclosures”
As long as we can call you “Malcolm” I’d keep my name, but in case you can’t read, my other name is blocked because I disagree with Mooney, which apparently someone doesn’t like.
Namechange/TwoCents/several-other-pseudonyms said “OK then. I guess you have no place bashing two perfectly good advocates.”
Can we just call you “Ed” from now on?
George who?
******First to file was invented by me******
MRT, You should totally patent that, and then enjoin anyone in the US from practicing it. For extra irony points, swear behind the European FTF system.
“….But then, I’m not a ConLaw scholar either”
OK then. I guess you have no place bashing two perfectly good advocates.
“Your cynical attitude about American success stories is remarkable. Time and again to dismiss the individual inventor and denigrate the whole patent system. You consistently favor the interests of the big corporations who are actively working to undermine the patent system.”
I think the (at least, my) problem with the Morse example you provided, is that you suggest that he is the rightful inventor because he conceived of it first, and that by extension, the patent system should protect him as the first to invent.
However, you go on to say that while he toiled away in his lab, others also conceived of, and developed, similar ideas. Yet, you conclude that Morse was first to invent, and should be the rightful patent holder. However, aside from protecting the inventive entity, the patent system is supposed to advance the arts by eliciting disclosure. If Morse was not the first to disclose, then why should he still be rewarded with a monopoly?
I can’t say that I think FtF is inherently more fair to the inventor, but from the point of view of the society granting the monopoly in exchange for information, it certainly appears to better incentivize quick disclosure. The patent system should not be solely concerned with granting monopolies, it should also keep in mind that the public desires as much disclosure as possible, and as early as possible.
I think the question should be whether the tradeoff for earlier disclosure is worth the cost to inventors, not just a question of which system is best for the inventive entities involved.
“Here is another excellent article that was proffered by Mr. Suominen and his partner, a Princeton and Harvard Law grad when FTF last raised its ugly head … I suppose you will casually dismiss this piece too.”
As far as I can tell it’s the same piece, only with a cover letter signed by Suominen’s boss. For what it’s worth, simply graduating from Harvard Law doesn’t necessarily make you a ConLaw scholar either. With regards to the substance of the article, I think it’s interesting that Suominem only cites to one person that even resembles a ConLaw scholar (Walterscheid, who is generally described as a legal historian), and then only to note that this person DISAGREES with the notion that “inventors” in the Constitution means “first inventors.” Sorry, I’m just not impressed. But then, I’m not a ConLaw scholar either.
NOTICE: apparently anyone who disagrees with Mooney will be banned by PatentlyO…
George Soros is even more powerful than I thought.
Sorry “BigGuy,”
Here is another excellent article that was proffered by Mr. Suominen and his partner, a Princeton and Harvard Law grad when FTF last raised its ugly head:
link to uspto.gov
I suppose you will casually dismiss this piece too. No “BigSurprise”
TwoCents, another possibility is the language you are using. Even something as simple as “h4te” (which by the way is slang for another word) might cause your comments to be filtered.
TwoCents cited “Edwin A. Suominen, “Re-Discovering Article 1, Section 8 – The Formula for First-to-Invent,” September 2001, 83 J. Pat. & Trademark Off. Soc’y 641″
After dismissing several commentors for not being “ConLaw scholars,” you cite for support of your constitutional arguments a patent agent / wanna-be “non-practicing patent licensing entity”? That’s pretty lame…
There it is again, that same old line, by the same old poster with the name format OneTwo. Why not test your hypothesis and try posting with your old name again, TwoCents. Maybe you will realize that it is just a minor flaw with some web technology and your inability to recognize such and overcome such a minor hurdle.
NOTICE: apparently anyone who disagrees with Mooney will be banned by PatentlyO…
Malcolm, the benefits “we” get are inventions from people like Morse who have a bright idea on a boat and have the incentive to pursue it for years, spending his own money on tools, equipment and the like, with some guarantee that he eventually obtain a return on his investment.
Your cynical attitude about American success stories is remarkable. Time and again to dismiss the individual inventor and denigrate the whole patent system. You consistently favor the interests of the big corporations who are actively working to undermine the patent system. Anything they like, you like. And yet you have the gaul to call people who favor the small entrepreneur “tea bagging” shills of corporate America.
It is you, Malcolm, who are on that side against the small fry.
I agree with Jules and Exasperado, but the CAFC deserves a lot of the blame for this state of events. Limiting claims based on discussions of advantages or problems solved is going to lead to practitioners removing those kinds of discussions. I mostly work for small companies and inventors, so I can draft how I think is best, but when I do work for larger companies they often have rules like “don’t use the word ‘invention.'”
My vote is no politics unless it relates to patents. Talking about which senators live in states with a lot of software development = good. Talking about socialistic health care or illegal wiretapping = go somewhere else.
Dear Mr. Mooney:
Your discussion of O’Reilly v. Morse is much appreciated. I think that the short answer to your query is that Mr. Morse was comporting with the only power in Congress that allows the grant of a monopoly in the useful arts: to advance the useful arts. With that said, could it be that a lawfully obtained patent, with no IDS issue and no other infirmities be held invalid by a Court as an improper grant of a monopoly, because it does not advance the useful arts. In other words, does an Article III tribunal have the power at Summary Judgment to determine that a monopoly granted in accordance with Title 35 of the United States Code still fails to comport with Article I, section 8, clause 8 of the United States Constitution. In this manner the patent could be stricken by the court. It should be borne in mind that there should never be a presumption of validity when a patent is stricken on a constitutional challenge.
I believe that the Courts would very much enjoy rendering lofty Constitutional opinions than the more mundane opinions of this prior art reference was missed and that Expert was that etc. In my opinion it would be a much cleaner way to clear up much of less than virtuous patents. the mess that is being created by the USPTO.
If someone could help me identify the patent, I refer to the patent that was obtained for a method of swinging on a childhood swing that involved mere changing your weight to cause rotation. Let’s not discuss the well known knowledge of the same. However, even assuming that this was not known to anyone whoever used a swing . . . that method, in my opinion is not of the requisite utility to warrant a monopoly, because it is only for entertainment. I do not believe patents directed solely for entertainment should be granted. There must be an industrial applicability. Along those lines I find repugnant that Copyright is longer than the natureal life of a person; however, that body of law merely reflects a failure of our democratic functions, i.e., Campaign finance activities.
Exasperado: that was completely off topic, but I agree with you completely. And when the claim has no special features then it probably leans towards obviousness.
Ned: I still am amazed to read cases like O’Reilly v. Morse where Morse conceived of his invention in 1832 on a boat coming to America, but took eight years before he filed his patent application. During those eight years, he worked on his invention to develop it (he was a professor). Others independently invented virtually the same thing in the interim and filed or published first. Morse lost his overseas patents because of this and his own publications, but prevailed in the US due to his early invention dates. A greater example of the benefits of a first to invent system to the inventor could not be made.
This makes no sense whatsoever unless we assume that when Morse was born he was “supposed to be” the first “legal” inventor of the telegraph in the US. Other than getting the name of the inventor “right” under that wacky assumption, what are the “benefits” you are referring to? As you admit, “others independently invented virtually the same thing in the interim.”
Same holds true, by the way, for nearly everyone of those “old” inventions: the phone, the electric light, the phonograph, motion pictures, etc. The history books many of us grew up with tell a simple story about “ordinary inventors” but the reality is that our most famous inventors were also tireless promoters of their own fame and (at least in the case of Edison) quite ruthless about destroying or buying the silence of dissenting competitors.
Well, I gotta say that the average US-drafted app that I see coming down the turnpike mowadays is painful to read.
Page after page of “in an embodiment, x may be y.”
#So what is it you’ve invented?
-Read the claim – that’s what.
#Um, OK, that looks like fairly arbitrary collection of features. What’s good about it?
-Not sayin’
#What’s different about it?
-Not sayin’
#What problem does it solve?
-Not sayin’
#Which bits are important?
-Not sayin’
#Which bits did you know about already?
-Not sayin’
Sheesh!
“The patent clause need not explicitly state “first” inventor to have the issue of first inventor arise in a constitutional context”
We know that two people can have a copyright for exactly the same literary work. So when Art.1 sec. 8 says “authors” it doesn’t seem to care about who the first author is. Is there a basis to read in “first” for inventors and not for authors? Or is our copyright statute unconstitutional because it doesn’t care who is first?
“This article analyzes the command of Article 1, Section 8 of the U.S. Constitution that Congress may grant exclusive rights to “inventors” for their “discoveries.” The conclusion of this analysis is easily overlooked in the “horse trading” atmosphere of international treaty negotiations, but it is of critical importance. The U.S. should not, and must not, abandon the uniquely American, and uniquely successful, first-to-invent system of patent protection prescribed by Article 1, Section 8 and maintained for over two centuries.”
~ Edwin A. Suominen, “Re-Discovering Article 1, Section 8 – The Formula for First-to-Invent,” September 2001, 83 J. Pat. & Trademark Off. Soc’y 641
Troll: The garbage right wing propaganda on this site is required to balance the garbage left wing propaganda on this site.
What is the “garbage left wing propaganda” you are referring to? I seem to have missed that somehow.
Has it ever occurred to you, TwoCents, as you preen yourself, that “Calling it like you see it” and “Right wing propaganda” are not mutually exclusive?
I don’t watch Glenn Beck every night. I don’t watch any propagandist, any night. I know a little of the USA and I know a little of Europe. When you write:
“..individual rights are essentially non-existent..”
you reveal yourself as a gratuitously offensive and simple-minded victim of propaganda.
Can you debate patent law on the merits? Can you tell us what meaning you deliberately intended to impart to your sentence by including the word “essentially”? I’m most curious to know. Did you mean 1)”of necessity” or 2) “more or less” or was it because 3) it sounded good, or 4) you didn’t really think about it ? Or are you not even sure which of these it was?
Can you even write grammatically correct sentences? If not, please leave. You are embarrassing your fellow Americans here.
Malcolm, er, um, Publius,
The garbage right wing propaganda on this site is required to balance the garbage left wing propaganda on this site.
This is the trainwreck – without the balance, the site would merely be an uniteresting left wing cesspool.
As it is, we get the colorful interplay of the csomic battle between good and evil.
“The inventor is the first person to invent the claimed invention.”
The inventor is anyone who comes up with the invention.
Both Kilby and Noyce are correctly credited with the invention of the integrated circuit. Kilby did it first, but that doesn’t mean Noyce didn’t also invent it.
You are reading limitations into the definition of inventor that just aren’t there.
David Boundy,
Your conclusion that FTF is constitutional is glib and unsupported.
The patent clause need not explicitly state “first” inventor to have the issue of first inventor arise in a constitutional context, simply if for no other reason, to demonstrate who the “inventor” is. The inventor is the first person to invent the claimed invention.
I guess you are not a ConLaw scholar either. But I like the fact that you seem to be against FTF.
Two Cents/Marx:
Turn off Glenn Beck and back away from the TV.
Seriously, do we really need garbage right wing propaganda on this site?
Dear Ned, and Cowboy, of course you are both right, that transition will be painful. So, I think you are right. Best not even to think about it.
What I was on about, with my “ratchet”, is that FtI courts expect perfect drafting, perfect, knowing that the event of filing doesn’t occur till the invention is mature. FtF courts understand the reality, that drafting can’t be perfect, when every inventor has to choose between drafting more perfectly or losing the race to the Patent Office.
As to Morse, sorry but I don’t get it. If it was the fact, that many people had independently reduced dot dash communications code to practice, and published, in the years before Morse got to the PTO, what public benefit accrued by belated award of a monopoly to Morse? Heresy to write it, I suppose, but it strikes me that the Morse story (as you tell it) provides a good example of the wrongheadedness of FtI, and the damage it does to promotion of the progress.
If there’s more technological progress in the USA than in all the ROW put together, that just might be for some reason other than the FtI patent system.
Max says: “Answer: Under FtF, validity (clarity, enablement, sufficiency of disclosure) is judged by different standards. When everybody involved, from the Supreme Court down, has had a hundred years of experience of FtF, everybody factors into the law the consequences for real inventors of a race to the Patent Office.”
So, my fellow Americans, from the voice of experience we learn that the implications of changing from Fti to ftf involves more than just changing how we decide priority contests, but the whole pantheon of issues involved in how one writes a patent application, examines a patent application for sufficiency of disclosure and interprets the scope of the claims and DOE of a patent. Under stare decisis, we will, however still be using the same rules of examination and litigation and therefore not get what Max suggests would be the right result. To get the right result immediately upon adoption of FTF, then we apparently need to re-write section 112 and lord know what all else. I don’t see that the proposals to convert the US to ftf including all of that.
MaxDrei: “Question to you now Ned. Whether or not FtF encourages crappy apps, doesn’t FtI act like a ratchet, driving app lengths ever longer? Seems to me that, under FtI, no specification is ever long enough. Who pays for that feature of FtI? Can we agree that it’s not patent attorneys who are paying for it? But maybe small inventors do?”
I think the problem lies elsewhere. Best mode is one reason we have to describe more. We might also be a bit more extreme on requiring a written description. But as to the vagueness of what we say, that can also be attributed to courts limiting the scope of the claim to exactly what is in the preferred embodiment if we talk too much about what the invention is.
All this will not go away with FTF per se. They can be addressed separately, probably in the courts, without going to a first-to-file system.
I further think a lot of the argument takes place out of context. When one judges which is better, a lot of time it depends on whom you are talking about: the inventor or the potential infringer; the large company vs. the small company; the professor in a university that has a large budget for patents vs. the smaller budget U; and it also depends upon technology to a degree.
But, at the most fundamental level, I think, personally, the system should be designed best to protect the inventor and inventions; otherwise we loose sight of the purpose for a patent system. From that point of view, US history has shown that allowing the inventor or the scientist to develop the invention ’til he is satisfied before he files. If others publish at any time, he has one year to get a patent application on file. But when he is ready, he has one year to promote his invention, obtain backing or revenues and get a patent application on file.
This system has stood the test of time and it works.
The pressure to file first in FTF systems cannot but short-circuit this process. One cannot tinker in the lab until he is ready, as there is no grace period for a statutory bar to take place. Without a first to invent system, grace periods don’t make much sense which is why the push in the US to go right away to the European system with no grace period.
I still am amazed to read cases like O’Reilly v. Morse where Morse conceived of his invention in 1832 on a boat coming to America, but took eight years before he filed his patent application. During those eight years, he worked on his invention to develop it (he was a professor). Others independently invented virtually the same thing in the interim and filed or published first. Morse lost his overseas patents because of this and his own publications, but prevailed in the US due to his early invention dates. A greater example of the benefits of a first to invent system to the inventor could not be made.
The same financial concerns do not affect very large companies or well financed universities. Nor do they affect drug or chemical companies. Both are effectively on a first-to-invent timetable because they have to file across the world. To them, the small inventor is a threat and whatever they say about the small inventor has to be taken with a grain of salt as they are heavily biased and conflicted. Imagine consulting drug companies about the best interests of generics! What would you expect? Honesty?
So,Observer, let’s see if I have understood it right. It’s everybody else in the ROW that’s off the beat. Glad we’ve got that sorted out.
The English knee-jerk reaction to that alien entity “Europe” is that whatever it comes up with is unacceptable. The English often forget that “Europe” includes The British Isles. Sometimes I think that America views “The World” in much the same way as England does “Europe”. It’s the water in between, I suppose.
What’s to become of living standards in England? It’s more and more difficult to be optimistic.
Asian-originating are the same as European.
Well thanks for that observation Observation. If those European-originating apps do the business everywhere in the world except the USA well then I think you just confirmed my point didn’t you?
May I ask: is it just “European” originating cases that are so useless? And amongst those European-originating cases, do you include all those from European-based global titans like Nokia or VW/Audi/Porsche or Sanofi/Novartis? Where in your hierarchy do you place Asian-originating apps?
MaxDrei, European origin applications are good for a few “picture” claims, often not much more.
Ned Heller asks a searching question: how is a race to the Patent Office compatible with the real needs of real inventors, who can’t afford to pay for a formal US patent application before they start seeking investmernt in their invention (and before their Professor publishes).
Answer: Under FtF, validity (clarity, enablement, sufficiency of disclosure) is judged by different standards. When everybody involved, from the Supreme Court down, has had a hundred years of experience of FtF, everybody factors into the law the consequences for real inventors of a race to the Patent Office.
Ever wondered why apps from the rest of the world are half the length of apps originating within the USA (unless they emanate from a global titan that writes one app for filing everywhere, including the USA)?
In Europe, small filers get their 20 year monopoly even with an app half the length of Titan’s. Ask Titan how frightened he is, in Europe, of small filer, with a short app but with a good new idea, clearly expressed. Ask the courts in Europe which app they are more likely to enforce, one that’s short and to the point, or one that never says what the invention is. Ask how the scope of protection is determined in Europe. You in the US might not have a functioning DoE any longer, but we do. Ask what it is that Europe has, that’s different but better than “Best Mode”, and which sets the scope of monopoly to that which is commensurate with the scope of the contribution the inventor made to the art.
Question to you now Ned. Whether or not FtF encourages crappy apps, doesn’t FtI act like a ratchet, driving app lengths ever longer? Seems to me that, under FtI, no specification is ever long enough. Who pays for that feature of FtI? Can we agree that it’s not patent attorneys who are paying for it? But maybe small inventors do?
What is the answer to your question, Malcolm?
Can you incorporate by reference another document (e.g., a patent) in a provisional application?
Provisional applications aren’t examined for such formalities. If you wish to incorporate something by reference, it should be incorporated in your provisional and in your utility app. Your real issue is: when is incorporation by reference not sufficient to support a claim?
Can you incorporate by reference another document (e.g., a patent) in a provisional application?
(I know that you can in a regular non-provisional application, but I seem to remember reading some place that you could not in a provisional application.)
Thanks
Mooney once again, quite naively, discounts the real source of progress, the marketplace.
No big surprise here, pass the Birkenstocks…
investors who are deciding whether to put capital into startups,
Ah yes, the most important people in the universe. We must do what pleases them.
Marxist wealth redistribution
Oooooh, so scary! Maybe I should file a patent on a method of redistributing wealth.
Speaking of which:
âHereâs how it works. They configure the phones to have multiple easily hit keystrokes to launch âGet it nowâ or âMobile Webââusually a single key like an arrow key. Often we have no idea what key we hit, but up pops one of these screens. The instant you call the function, they charge you the data fee. We cancel these unintended requests as fast as we can hit the End key, but it doesnât matter; theyâve told me that ANY dataâeven one kilobyteâis billed as 1MB. The damage is done.
âImagine: if my one account has 1 to 3 bogus $1.99 charges per month for data that I donât download, how much are they making from their 87 million other customers? Not a bad scheme. All by simply writing your billing algorithm to bill a full MB when even a few bits have moved.â
link to pogue.blogs.nytimes.com
Call Professor Duffy and let him know about this awesome business method. Promote the progress!!!
I think FTF is, unfortunately, constitutional. The text only says “rights to inventors,” some inventors, any inventors. Not “first inventors.”
I also think FTF is an incredibly dumb idea, supportable only if you are in a blinkered world like the PTO, where all you see is patents that are filed (not the ones where everybody saved a lot of money because the idea was found to be a bad one before a lot of money got spent), or some similarly-narrow slice of the patent world.
If you represent startups, or represent investors who are deciding whether to put capital into startups, it’s easy to see how crucial the strong 102(b) grace period is to the future of the innovation economy.
Dennis, the term disruptive seems subjective and nebulous. Perhaps ranking by which we think is the most inappropriate – or some other term.
BTW, I forgot to put Malcom Mooney in the group with Max, Ad and interloper – i.e. those making comments with a worldly vision.
Good nite – it’s late over here.
Since revealing my new patent reform act foreign countries know even more about fair and honest methods of determining inventorship so they will win the economic battle to attract inventors to their countries and leave our corruption of jackles in the dust.