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First to File or First to Invent?

June 2, 2010

Recently, I was explaining the patenting process to one of my friends. He was surprised to hear that in the U.S. there is a first to invent patent system, along with a one-year grace period to file a patent after the first sale (offer, etc.). “That really makes it easier on the inventor!” he said. He is right, the one-year grace period does make the patenting process easier on inventors, however, that does not necessarily mean that it best promotes progress in the useful arts.

A first to file patent system that eliminates the one-year grace period will better promote Constitutional policy because more patent applications will be filed sooner. A first to file system will encourage more patent application filings, resulting in more invention disclosures being published, and thus creating a greater wealth of public knowledge. This enhanced public knowledge will allow others to build off prior developments and will encourage continued innovation.

The current first to invent system, along with its one-year grace period, lowers the amount of documented innovation to the detriment of inventive progress because fewer applications are filed. The grace period allows inventors to sell their products for a year before deciding whether or not a patent will be valuable. This is advantageous to the inventor in that it allows him to gauge how valuable the product is, and if it is worth patenting. However, the grace period also ensures that many inventions are not adequately described and recorded in the patent office. These inventions, if recorded in the patent office, could be tweaked and enhanced by others, or could be applied in a different field, resulting in successful innovation.

A first to file system is certainly not perfect. I see at least two protections that will be needed in a first to file system. First, equity demands that there should be some protection against the “stealing” of an invention. Second, because of the rush to file, there must be an ability to update and modify the patent application for a certain period of time. This modification option would be important to accommodate for new tweaks and developments, and should be available without extra charge.

Additionally, there is the hurdle of the Constitution requiring a first to invent system. The Constitution requires that rights be secured to inventors. It can be argued that a first to file system would not adequately protect “inventors” as required by the Constitution. However, clever drafting could likely overcome this concern.

A first to file system (using the term “first inventor to file) has essentially been proposed in the Patent Reform Act of 2010, which also effectively eliminates the one-year grace period. This has been met with some scrutiny and many patent professionals oppose it, favoring the current system. This favor is not surprising, a first to invent system makes life easier and allows those involved to make more money. While making money certainly stimulates innovation, it is not the only consideration in patent act construction.

True, a first to file system may diminish profits to inventors, however this disadvantage is outweighed by the advantage of the expanded knowledge pool that would result from a first to file system. The expanded knowledge pool would lead to more inventions. More inventions will further progress in the useful arts and at the same time make everyone more money.

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8 Comments leave one →
  1. June 2, 2010 10:36 pm

    “This modification option would be important to accommodate for new tweaks and developments, and should be available without extra charge.”

    LOL. We don’t much care about the extra charge bit I doubt, but what would be an issue would be rampant new matter flowing in and the subsequent blurring of the line and exactly the same kind of priority date nonsense that goes on now, which is precisely the things ftf help to alleviate.

    The amount of extra documentation might increase, but there is no garuntee that any of the extra documents will ever publish. For that reason, your “it promotes documentation” argument at least half fails and likely mostly fails.

    • June 3, 2010 8:45 am

      Blurring of the invention is a good point regarding adding new matter. My thought was in the race to the patent office the quality of patents would go down, so it would be good to address that issue somehow.

      While there is no “guarantee” that more documents will actually publish in a first to file system, it is highly likely that more applications will result in more publication. All of the new filings might not publish, obviously, but I am pretty sure at least some more will. You argue that there would be an inverse relationship between applications filed and publications. That does not make sense, therefore your argument most likely fails.

  2. June 2, 2010 10:53 pm

    Oh, and fyi since you’re young. Hardly anyone outside of the legal sphere reads patents for informational purposes or otherwise. They’re basically just a big con game now under the guise of disclosure for the greater good.

    • June 3, 2010 8:46 am

      Oh really? So there is no such thing as design-around or reverse engineering? Interesting. I’ll have to tell the guys down at R&D…

  3. June 3, 2010 4:07 pm

    “Oh really? So there is no such thing as design-around or reverse engineering? Interesting. I’ll have to tell the guys down at R&D…”

    You think that a patent’s disclosure has helped a design-around or reverse engineering in anything more than a handful of occasions? Excuse me while I lol@u. Not to mention the fact that those design-around people are involved in the legal sphere, involved because they are on the wrong end of a patent.

    Have you ever even worked in R&D? Have you ever worked in a factory? Well I have, and I sure as f never heard of anyone in my dept that concerned about someone else’s patents, and the word on the street is that everyone ignores them so as to avoid enhanced damages at trial. You’re relying on a theoretical mythical beast that could exist but hardly ever, if ever, does even including the instances of legal stick up.

    “My thought was in the race to the patent office the quality of patents would go down, so it would be good to address that issue somehow.”

    I agree, but allowing infinite continuations-in-part (which is basically what you appear to be suggesting) pre-examination isn’t the answer. In fact, I doubt there is an answer. That just happens to be a downside of FTF.

    “it is highly likely that more applications will result in more publication. ”

    I don’t know what makes you think that. Fully 30% or so of EU apps went abandoned pre-publication under FTF. That compared to about 10% or less in the US at the same time. Do you think the number of apps will jump by 20% by implementing FTF? I don’t know man. The numbers come out around even probably.

    “You argue that there would be an inverse relationship between applications filed and publications.”

    Hardly. I’m arguing that in a FTF system the amount of pre-publication abandonments is much higher than you appear to know. And then further that those effects counteract the increase in publications from increased numbers of apps.

    “Finally, “garuntee” is not a word.”

    I garuntee it is. At least in the south.

    I only critisized for lack o a ?

    • June 3, 2010 5:41 pm

      “Have you ever even worked in R&D? ”

      I have worked with R&D people, and I know that freedom to operates can be valuable in choosing how to proceed, especially in the biotech/medical fields. I imagine it depends on the industry. Still disclosure is a valuable aspect to patenting.

      “Fully 30% or so of EU apps went abandoned pre-publication under FTF.”

      Increased abandonments will certainly be a concern, I agree. I did realize that abandonments were higher in FTF systems, though not that high. I would like to raise two points:

      First, the current pendency of a patent app before the first office action is greater than 18 months. The data that I found (http://www.ipwatchdog.com/2009/11/08/making-the-case-against-first-to-file/id=7197/) shows that about 30% of EU apps go abandoned *after* the first search report. In the US, the first search report comes with the first OA, which would come after publication.

      Second, statistics can be misleading, so I am not completely sold on the above linked article. In particular, I see a higher abandonment rate, but I do not see what effect that has on the total issued patents. There would have to be a substantial increase in filings if there were a 30% abandonment rate or else the number of valid issuing patents would plummet. Plummeting issued patents would mean that the innovation landscape would be crushed by FTF. I hope that would not happen, and I do not think a change would be so catastrophic.

      So, assuming that patentable innovation in the US does not grind to a halt, the key seems to be to find a way to encourage quality patents while still having FTF. I also do not have a perfect answer, and I agree that there is not a clear solution, but it would be a good goal to strive for.

      Thanks for the helpful stats and the chance to flesh this idea out.

  4. June 22, 2010 8:59 pm

    Patent law’s one-year grace period serves multiple important purposes. The fact that it allows an inventor to gauge the likely profitability of an invention on the market may contribute to the reduction of a glut of junk patents. Unprofitable and useless patents needlessly contribute to the USPTO’s already-staggering backlog, and deplete the patent office’s already-scarce resources. It’s not just inventors who may benefit from the grace period.

    • June 29, 2010 9:24 pm

      Sorry for the slow response, bar studying is keeping me pretty busy. Anyway, there is no doubt that a first to file system would increase the number of patents, many of which would not be profitable. Also there is no doubt that it would increase the number of patents that the PTO would need to deal with.

      That however, is not my point. My point is that, as a whole, the increase in disclosures would get more inventions into the public domain. This would allow inventors to further innovate based on the more robust public domain. Many “junk” inventions could be further developed by others to become profitable, instead of being discarded and concealed as in the current system.

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