Patent Office Seeking Comments On How To Implement A 'First To File' Regime Instead Of 'First To Invent'

from the help-them-not-muck-it-up dept

You may remember that last fall, there was an incredibly weak attempt at patent reform known as the America Invents Act. This was the result of a nearly seven-year-long fight over patent reform, with nearly every good idea from early proposals being watered down to completely useless, and a few bad ideas ramped up for good measure. Nothing in the AIA actually dealt with the problems of patent trolls or patent thickets. One of the ideas that survived the years-long culling was flipping the US patent system from a “first to invent” system to a “first to file” system. I’ve long argued that this is a very bad idea for a variety of reasons. First, it encourages inventors to file for lots of patents as early as possible to beat anyone else to the Patent Office, rather than making sure that the invention is actually worth patenting. It also seems to go against the basic principle of the patent system, if it’s supposed to reward actual inventors. Finally, switching to a first to file certainly seems likely to favor large companies with big legal staffs that can focus on rushing out as many patent applications as possible. Smaller entities might be in trouble.

To be fair, the arguments in favor of this switch are basically (1) everyone else does it (mostly true) and (2) proving who was first to invent is a total pain in the ass and can be slow and costly. Thus switching to a first to file system could save a lot of wasted time and money in the cases where there’s a dispute. That may be true, but I’m not convinced it’s a good reason.

That said, it doesn’t much matter what I think: it made it into the bill and is now the law. The US Patent Office is now seeking comment on how it should go about implementing this new rule. It’s put out two requests. First, it wants to know how it should change the examination guidelines for patent examiners (pdf and embedded below) to take this new rule into account. Second, it wants comments on how it should amend the “rules of practice,” regarding this change — since the current rules are based on the old “first to invent” system.

For those thinking of participating, this is not the place to argue why “first to file” is a bad system (or even why the patent system is broken). I imagine any such filings will be (correctly) deemed off-topic and discarded. However for those patent holders and patent lawyers (and scholars) for whom this change is a big deal, now might be the time to share some thoughts with the USPTO for how it can implement this change with as little damage as possible.

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Comments on “Patent Office Seeking Comments On How To Implement A 'First To File' Regime Instead Of 'First To Invent'”

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Anonymous Coward says:

Re: Re: Re:

It’s why I can’t figure out why Mike is worried about “breaking” anything. He hates patents, why care if they are just moving the pieces around and keeping them all?

He’s going to whine about the patent no matter what. We all know that. Of course, the change to first to file isn’t really a big deal as there were very, very few interferences to begin with. But yeah, he can milk this for all its yellow journalism/FUD spreading worth. What a joke.

abc gum says:

Re: Re: Re: Re:

Of course there are no studies or articles which discuss the two methods that one might reference in support of claims that the change is no big deal … so why provide any.

If a million monkeys were filing a million patents for a million years would they eventually patent everything that could possibly be patented? This would certainly bolster the patent office budget and would create many jobs in the field of law, however the benefit to society is questionable at best and would be very bad for the economy.

Anonymous Coward says:

Re: Re: Re: Re:

” the change to first to file isn’t really a big deal as there were very, very few interferences to begin with.”

What do you mean by ‘interferences’? How is the amount of public ‘resistance’ to a bill, especially if it’s a bill with many ambiguously written provisions with little time for public scrutiny (because most of the bill was probably drafted behind closed doors and the bill was only openly available for a short period of time), an indication of how substantial a change was?

Anonymous Coward says:

Re: Re: Re:2 Re:

(well, to be fair, the bill has been discussed on Techdirt for a while, but as has been mentioned, undesired last minute changes were made to make it much worse. It’s a bait and switch con game, start with a bill that the public likes and change it up at the last minute to one that no one wants before the masses have a chance to coordinate a response).

Pwdrskir (profile) says:

Re: Re: Work vs Leeching

Mike is trying to save patents. He is pointing out that people who create AND are productive are being kicked to the curb for people who are not.

Any dumbass can sit around and file some vaguely worded idea that some dumbass at the patent office will approve. To actually make ideas work is what takes the talent. There are hundreds of patents that exist only because they were filed first, they were not put into production AND work first.

Anonymous Coward says:

Re: Re:

In theory, yes. In practice, no: the corporations and their armies of lobbyists will ensure that no, it will not be reversed. America is showing signs, such as with the AIA and other IP maximalist garbage, that it is stagnating (which if anyone has read Foundation by Isaac Asimov, you’ll know this is a very, very bad thing for the future of America).

Jeff Rowberg (user link) says:

As someone who has suffered from a ridiculous IP litigation threat, I vote that they take the resources that will no longer need to be needed to determine which of the multiple filing parties was the first to invent and instead devote those resources to taking note of glaring prior art and obviousness, to immediately reject a much larger portion of patent applications.

That seems like it should be about as beneficial as anything else could be.

Anonymous Coward says:

Re: Re: Re:

In tech, there is always prior art. Someone coded a widget for personal use then uploaded it to a message board and said, “Anyone else find this useful?”. A year later someone else took the idea, turned it into a full feature product, and filed a patent.

Or some version of that.

Vic Kley says:

Re: Obviousness

Obviousness is common response of those who judge in hindsight, but lack the ability or understanding to invent in the moment.

Obviousness is already grossly overused by the USPTO. The worst is software here lazy examiners and inventors refuse to make truth tables or some standard form of logic so that vague descriptions do not get in the way of inventive contributions.

the examiner without any pre-knowledge must be given the state of the field at the time of the invention and with that alone show obviousness.

ltlw0lf (profile) says:

Re: Re:

It is time to build a genealogy tree for “inventions” because now it is worth showing who patented something first and can invalidate new patents more easily.

I believe James Burke already came up with something like that. He called it “Connections” and you can read more about it here.

One thing I learned from watching Connections is that everything is built on top of those things before it, and another thing I learned is there is no shortage of assholes who thought they invented something first and thus claim that they are entitled to a portion of everyone ‘elses profits for inventing it. I don’t have a problem with people who actually invent something making some money from it…my problem is that the system only works for the few rich folks out there who actually didn’t do any work, while the inventors it was meant to help are grounded into meat under the heel of those folks. Capitalism is about inventing a better mousetrap which the customer is happy to hand over cash for. Capitalism is not about suing your customer and your competitors because you fail at life.

Anonymous Coward says:

Re: Re:

The legislators have to be seen “doing something” and so they pass the laws, tell the director -do this- then the director pushes it down the ranks to middle management, then the next layer of management, and so on until the implementors say “uhhh, well how?” Whereupon each layer of management shrugs their shoulders and passes it back up, and finally some genius says “lets ask the internet!”

nospacesorspecialcharacters (profile) says:

What a joke!

They may as well just setup a public facing ftp server and encourage everyone to bung every random passing thought they have onto it in a plain-text file.

Then they can just send invoices to the contact detailed in the text file and once the invoice is paid it’s filed.

Why even bother with the pretense of looking for prior art or questioning the obviousness of the patent itself?

ejoftheweb (profile) says:

a third method

Since a patent is essentially a limited monopoly in exchange for publication of the invention, it should be neither first to file nor first to invent but *first to publish* (in a form readily understood by one skilled in the art).. These days, fairly easy to determine, competing services could offer signed proof of publication, would make patent searching easier and mechanisable. Statute and caselaw should provide that obfuscatory drafting of the spec would nullify a claim to priority, since publication is the aim.and if you’ve tried to hide the invention by not being clear about how it works you haven’t published and shouldn’t get priority.

Mike Masnick (profile) says:

Re: First to file

This is all interesting but we are NOT switching to First to File. That is what separates the experts from the self-proclaimed pundits. Non-experts tend to ignore the stuff they don’t understand. We are switching to “first inventor to file” which is dramatically different from “first to file”.

Actually, we’ve discussed that (contrary to your snide ad hom). We didn’t ignore it. The fact is that the difference is miniscule for all realistic purposes.

Hellmark (profile) says:

More ways for trolls to profit

The thing with this whole first to file deal is that it should be fairly easy for patent trolls to start applying for random patents. With how loose the patent system is now, they probably could get patents on things that aren’t even proven possible yet. Or hell, pay some grunt in a lab for what their betters are working on, patent it while they’re still working out the finer details, and bam, sue ’em as soon as they bring it to market.

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