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United States Transitions To A 'First-Inventor-To-File' Patent System

forbes.com

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Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#31

Post by roc »

GotAnyMegadeth wrote: post #18
Nursie wrote: post #6

I'd rather transition to a system where if two people try to file for the same thing within a few months or a year of each other, neither one gets it because it's probably pretty obvious.

Then you could stop each others patents just by filing a copy...

You wouldn't know what your competitors are filing within months of it happening and then have any opportunity to do anything about it.

Applications are only published to the public either 18 months after the earliest priority date or after the patent has been granted.

The only other time you might know what they were up to is if they made a public disclosure about the technology. But as that has implications for their own filing strategy, they're not likely to do that in a way that left you an opportunity.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#32

Post by csomar »

hmottestad wrote: post #9

I remember an article about SpaceX where Musk said that they didn't file many patents, because then other countries essentially had free access to their inventions if they didn't honour patents (China was mentioned). With this change in law, they may no longer have protection against a patent filed by someone else that they (SpaceX) invented first...simply because they were not the first to file. This may bring about…

On the other hand, suppose that Company A describes the invention in detail (or in more formal terms, provides a disclosure) at a trade show, before a disclosure or a filing by the second company. In this case, Company A can get the patent even though it filed after Company B.

So my understanding they can put some information (but not their whole invention) and get recognized for the patent.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#33

Post by jbondeson »

Daniel_Newby wrote: post #30
jbondeson wrote: post #21

Earlier quoted context omitted.

You are incorrect. Trade Secret laws and prior continuous use protect SpaceX very well if someone were to swoop in and patent a technology they use. It wouldn't necessarily prevent a patent from being obtained, but it would protect SpaceX from being found in violation. I know this from first hand experience.

How does that work? The whole point is that the first filer wins regardless of prior invention.

Prior Use Right says that if a you have used a technology commercially for more than a year prior to the file date of a patent[1], or public disclosure thereof if your technology is a derivative of the that disclosure, you cannot be held in violation of the patent. This holds regardless of if you have publicly disclosed your use of this technology or not.

When you combine this with Trade Secret law you protect yourself from one of your employees taking your technology, starting a new company and patenting it (potentially coming in under the 1 year mark).

First-to-File only comes into play when multiple entities file for overlapping patents, it simply finds in favor of the first to file for a provisional patent. This avoids a mess of trying to determined who came up with the idea first, which was always a contest of who documented first.

[1] You could still be in violation and not know it as provisional patents are non publicly disclosed for 18 months, so in reality there is technically a 2.5 year window where you can't be absolutely sure someone else has filed.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#34

Post by jmatthew3 »

rogueriver wrote: post #27

1. My gripes with our patent, and trademark system comes down to fees. 2. I draft all my own patents(only 1), and found the process difficult, but doable. I also filed my own trademark. 3. I did have an issue with the filing fees. I contacted the offices involved and complained about the fees. I felt the fees might prevent many young inventors fron protecting their invention, or trademark. 4. They told me their was s…

Disclaimer: I am a former software engineer, now a patent attorney. But, I am not your lawyer, nor am I the lawyer for anyone who reads this. (Sorry, I have to say that).

Anyway, the USPTO has had 50% lowered fees for "small entities" for some time now. The patent office will soon add a new "micro entity" classification (paying 75% of fees) that might help individuals without a lot of money. The total filing cost as a micro entity will be just over 300 bucks. That's pretty reasonable considering the work involved in examining a patent application.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#35

Post by unavoidable »

nicktelford wrote: post #3
GotAnyMegadeth wrote: post #2

I don't really understand who benefits from this change? Doesn't everyone lose?

I'm pretty sure the USPTO and Patent Attorneys win, given that it'll encourage more people to file patents, and sooner rather than later. Not sure of the impact on innovation, but my gut instinct isn't good.

First to file actually reduces amount and cost of litigation. It removes the need to prove that you invented something 'first', which invariably involves a lot of wrangling over when an invention was 'invented' and at what point something could even be considered 'invented'. Those questions were deemed to be distracting and not particularly helpful to the patent process. First-to-file may actually be more helpful in prior art searches because it reduces incentives to 'sit' on an invention and wait out the market, and increases certainty.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#36

Post by jmatthew3 »

Daniel_Newby wrote: post #30
jbondeson wrote: post #21

Earlier quoted context omitted.

You are incorrect. Trade Secret laws and prior continuous use protect SpaceX very well if someone were to swoop in and patent a technology they use. It wouldn't necessarily prevent a patent from being obtained, but it would protect SpaceX from being found in violation. I know this from first hand experience.

How does that work? The whole point is that the first filer wins regardless of prior invention.

Disclaimer: I am a former software engineer turned patent attorney. However, I am not your lawyer, nor am I the lawyer of anyone who reads this. (Sorry, I have to say that)

Anyway, another thing that many people miss on the "first to file" issue is that it's the first INVENTOR to file. So, employee can't leave company, steal the invention, then file if employee was not the inventor.

The law really is only changing in the situation where two people invent the same thing, independently of one another. Under the current law, if both inventors file, only one is entitled to the patent - the inventor who actually invented it first (perhaps determined in an interference proceeding in the patent office or perhaps in court). Each inventor would try to prove the date of invention through documentation (keep those lab notebooks - or that git repo, or the old svn or cvs repo backed up!). Whoever successfully proves an earlier date of invention wins.

Under the new law, it's just who filed first. If two people file for the same invention, there will be a "derivation" proceeding in the patent office to determine whether one of the inventors "derived" his/her invention from another (ie, is that person actually the inventor).

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#37

Post by rayiner »

GotAnyMegadeth wrote: post #2

I don't really understand who benefits from this change? Doesn't everyone lose?

As mentioned elsewhere, this is narrower than it seems. It's a rule of decision for what happens if two parties file at the same time, claiming to have invented first. Before, they fight in court to see who invented first. Now, they just look at who filed first. It does not to anything about prior art. Inventing and disclosing first still bars future patents.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#38

Post by roc »

Nursie wrote: post #29
rogueriver wrote: post #27

1. My gripes with our patent, and trademark system comes down to fees. 2. I draft all my own patents(only 1), and found the process difficult, but doable. I also filed my own trademark. 3. I did have an issue with the filing fees. I contacted the offices involved and complained about the fees. I felt the fees might prevent many young inventors fron protecting their invention, or trademark. 4. They told me their was s…

The fees are a deliberate barrier. The patent office must get funding from somewhere. If the fees don't at least mostly cover their staffing and research needs then huge companies that file a lot become a huge financial burden on the taxpayer, and the taxpayer is then paying for a business advantage for these companies. Obviously this sucks for the small inventor. I'm not sure how you get around it. The first X a yea…

While it's possible that too-low fees could hypothetically make the USPTO a drain on the federal balance sheet, it's currently a revenue source. [1]

And there's long been a separate (reduced) fee schedule for "small entities". And it's long been recognized those are still fairly high for situations like the lone-inventor, and such situations make up such a small slice of the USPTO's total revenue, that they certainly could be tweaked to be more accommodating without much net impact.

And because all that was well-known: The AIA included giving the USPTO some fee-setting authority. And one of their first proposals was to further reduce some small-entity fees and to create a new micro-entity status with commensurately-lower fees.

So it's not only a problem that would be fairly easy to address, without much adverse impact, it's actually already being addressed. (Though not really in-effect until later this year).

[1] Much ink has been spilt over the fact that the USPTO brings in more than it takes from the federal balance sheet, yet their budget has been left so low that they're chronically short on resources and thus backlogged.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#39

Post by jmatthew3 »

bediger4000 wrote: post #25
GotAnyMegadeth wrote: post #2

I don't really understand who benefits from this change? Doesn't everyone lose?

To my mind, "first to file" removes some of the moral basis of patents. That is, even if someone invented something first, whoever gets to the PTO first gets rewarded with ownership of the idea. We've taken away the reward that should be given to the First Inventor based on that sacred, difficult act of Creation.

Whoever is an inventor and gets to the PTO first gets rewarded. The patent system is an exchange. Inventor teaches the public how to make and use his invention, and the government gives the inventor a limited right to exclude others from practicing the invention. The switch to "first to file" encourages early disclosure, rather than inventing something in secret and waiting to file, or waiting until the inventor's one year bar period was about to run, then filing. Under the new system, if it's valuable and likely that someone else is working on the same system, early filing will be encouraged.

Re: United States Transitions To A 'First-Inventor-To-File' Patent System

#40

Post by feralmoan »

Nursie wrote: post #6

I'd rather transition to a system where if two people try to file for the same thing within a few months or a year of each other, neither one gets it because it's probably pretty obvious.

It's not always "that obvious", some ideas just make sense for the time, and there are some seriously low-grade patents filed which barely even qualify as invention anyway. I'd hate to be drawn into some BS politicking at the sake of concentrating on my technology. Look at Leibniz&Newton ... http://en.wikipedia.org/wiki/Leibniz%E2%80%93Newton_calculus...
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