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January 3, 2008


The National Association of Patent Practitioners (NAPP) has written Senate leaders to set them straight about proposed patent legislation: "the problem is that essentially all of the major proposals in the current bill would weaken patents."

NAPP is largely on point: inequitable conduct, damages apportionment, post-grant opposition, USPTO rule authority, publication, ex parte prosecution participation, venue, interlocutory appeal, exceptions, marking, best mode.

One of the most significant differences between NAPP and Patent Hawk, who represents absolutely nobody (i.e., has no vested interest), is the first-to-file issue.

First-to-file would greatly simplify inventorship from every standpoint. This is its major advantage: certainty. Contrary to the whining, first-to-file is equitable, and current law one hell of a muddle.

More important, but related, to first-to-file, is absolute novelty. Inventions ought to be just that: novel. Remove any grace period for prior art to date of filing. An inventor should first file a patent, then market, not the other way around. The sanctity of invention worldwide should be respected. As it is now, patented invention in the U.S. is as much a game as reality; it shouldn't be that way.

First to file and absolute novelty would honor invention while streamlining validity determination. 35 U.S.C. § 102 at present is a ridiculously complicated wad. It ought to read:

35 U.S.C. § 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

(a) before the filing for patent in this country, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language: in this or a foreign country, the claimed invention was known or used, or patented or attempted to be patented, or described in a printed publication;

(b) s/he abandoned the invention; or

(c) s/he did not himself invent the subject matter sought to be patented.

Then there's the little obscenity known as the Supreme Court in its KSR obviousness ruling. Current application of 35 U.S.C. § 103 most seriously needs fixing. But that's another blog entry...

Posted by Patent Hawk at January 3, 2008 1:58 PM | The Patent System


"Remove any grace period for prior art to date of filing. An inventor should first file a patent, then market, not the other way around"

While I personally do not have any problem with first-to-file provision,
some other stakeholders like US universities might have a huge problem with this provision if there is no grace period after publication.
Also, I haven't heard of any high-profile patent interference cases lately, have you ?
Interferences are so rare that justifying first-to-file by the necessity of avoiding interferences (as those proponents of the current patent "reform" routinely do) is just plain stupid.

The key question is this: why should US harmonize its venerable 200-year old patent system with the rest of the world if all other national patent systems are clearly inferior ?

Posted by: angry dude at January 3, 2008 9:41 PM

'angry dude' brings up valid points.

Interferences are merely indicative of a flawed system.

Patents are not venerable. But invention ought to be.

Simplicity and equity are the reasons for first-to-file. Swearing back ought to be considered just plain swearing: obscenity.

As to grace period - If you want a patent, file a patent. If you're busting a gut with pride to publish: publish, and thereby forgo patenting, by yourself or anyone else. Patents ought to be more important than publication.

The problem with grace period is reduction to practice. Should someone be able to publish a sketchy article, marking their priority date, then have a year to fill in the details? That's a scam, and needs to be stopped. That's not how provisional applications work - no new matter allowed.

Patent harmonization may have some advantages, but, as far as I know, is no reason for adoption of anything.

If universities have a problem with first-to-file and absolute novelty, too bad for them.

Somebody give me a good rational reason against first-to-file and absolute novelty.

Posted by: Patent Hawk at January 3, 2008 10:03 PM

Patent Hawk, I'm with you 100% on f-t-f and absolute novelty. For the first few years of my career I worked exclusively in a f-t-f jurisdiction. Makes determining patentability and validity much more predictable than it is in the USA.

Posted by: DJF at January 3, 2008 10:44 PM

To repeat: a 20 year monopoly is the reward the State gives to the owner of an invention for publishing an enabling disclosure of it (instead of keeping it a trade secret). That is the way to promote technological progress. Thus, having an invention is, as such, no reason to grant a monopoly (except for romantics). It's actually the A publication that is the quid pro quo for the grant of monopoly. And the first to A publish is the first to file, NOT the First to Invent. So, no need to bang on about "harmonisation" just reform your patent law into one that is intellectually coherent (and finds the right balance between i)the rights given to an inventor and ii)the freedom of everybody except the patent owner).

Posted by: MaxDrei at January 3, 2008 11:28 PM

At first blush, I agree that FTF will streamline things - but it will bring about new problems and it is not the panacea that people thing it is.

With FTF, clients will file crappy provisionals (and maybe also crappy non-provisionals) just to get something filed ASAP.
So the public could get poorer disclosures (notwithstanding the fact that the US court system ALREADY tends to punish good disclosures such as problem/solution-oriented disclosures - see Hawk's analysis of KSR).

If two competing inventive entities BOTH file crappy provisionals, then "sorting things out" (i.e. figuring out which specific claims are 'supported' by which crapy or semi-crappy provisionals) could also be a subjectice mess. The complexity of this mess could increase with multiple provisionals on both sides.

-sarcasm on-
Maybe the USPTO could solve the problem of "mediocre provisionals competing for a date" by having all applicants argue against their own provisionals or face patent invalidation by inequitable conduct.
-/sarcasm off-

Posted by: anonymousAgent at January 4, 2008 12:06 AM

anonymousAgent cites a hypothetical problem for first-to-file: sloppy filings. Mere presumption, and only a problem for those that don't meet the written description requirements, not patents in general.

There is no evidence for this argument. As it is now, the vast majority of patents take their filing date as the priority date, providing evidential counter argument.

What seems more likely is that patents could become more focused; more incremental CIPs. These would be favorable externalities to a first-to-file system.

Posted by: Patent Hawk at January 4, 2008 1:08 AM

Hey, Hawk -- you hit a real nerve with this one. You're getting almost as many comments as Dennis does.

Hey, Max -- quid pro quo?? Ha, where you been? That went out in the US in 1999 with the requirement to publish applications. Now the inventor has to give his invention to the world regardless of whether he ever gets through a screwed-up examination alive. It's all quid now, baby.

Yeah, FTF rocks. But, Hawk, you are too tough on the academics. I've been in academic science, and publishing is not (just) an ego thing. It's survival. For instance, you sweat your gonads off for years on a thesis and some suit comes in and tells you to keep your mouth shut until the patent is filed. Sometimes this means you can't even publish your thesis -- i.e. delayed PhD and missed post-doc opportunities.

Absolute novelty I agree with, but the US needs to implement a system like EPO or Canada where the application can sit for 5 years before a demand for examination is made. File your preliminary amendments or continuations during this period. Of course, the application still gets published at 18 months, and the clock still ticks on the patent's life. But you can still retroact your infringement case to the date of publication.

The other necessary ingredient for FTF is a strong prior use right. Anyone who has the invention in hand and is using the invention prior to another's filing date must be immune from infringement. Otherwise, the de facto law would be that one is required to patent in order to use his own invention, and that ain't right.

Posted by: BabelBoy at January 4, 2008 9:11 AM

Hey BabelBoy, if the A publication is devoid of anything new and non-obvious, then where's the harm to the writer in its being published and where's the justification for giving its writer any rights at all? And if there is something patentable in the A-published app, the writer will get home to issue sooner or later. The EPO allows Applicant a cascade of divisionals, so one can keep something pending, as each succeeding app goes through the mill of examn, issue and post-issue opposition. Ask Medinol.

Posted by: MaxDrei at January 4, 2008 9:55 AM

You write that the "sloppy filings" issue is the exception rather than the rule. In particular, you write "the vast majority of patents take their filing date as the priority date, providing evidential counter argument."
Well, my answer is the "today, under the current system, the VAST majority of cases do not require an interference."
And my counter-arguments to FTF are still valid:
a) FTF would encourage a large number of hastily-written "crappy filings" - so people would HAVE to use multiple provisionals, many of which would inevitably be crappy
b) FTF would be bad for universities;
c) FTF would be bad for people starting a company on a shoe-string - the last thing they want to think of in the initial stages is a patent filing. Under the current system, they can put this off for a year (with certain risks), and then file within 12 months. FOr established players, I agree - (c) is not an argument.

Please note that interferences are VERY VERY VERY rare now anyhow.

PS I love your blog, and agree with you on most issues. Personally, I think the ONLY major issues in the patent "reform" act are damage "reform" and the part requiring a search which would force applicants to argue against their own patent - I would support the "search" requirement IF a provision making the file-wrapper inadmissable were simultaneously included.

Posted by: anonymousAgent at January 6, 2008 1:43 AM

That last contributer, who writes that the inevitable result of FTF is "crappy" filings, is (I venture to suggest) without experience of what constitutes "crappy", in the context of a mature FTF jurisdiction. From where I stand (Europe), the crappy filings come from USA. They are multiple times as long as cases written in FTF jurisdictions, and are sure never to declare what the inventor's insight, and contribution to the art, really is. In my experience, the shorter the specn the more likely it is to reveal to judges (who, in Europe are Statute-bound to give to inventors a scope of protection that is "fair")what the contribution to be protected by the court really is. Thus, exactly to the contrary of what that last writer contends, FTF (as practised in Europe) would be very good news for shoestrings and Uni's in USA. Continental Europe might have a problem with speed to injunctive relief but 1) that's another matter entirely and 2) USA (FTI) ain't exactly free from that problem either. Hawk, you would agree, I am sure, that ANY sort of change disturbs somebody, so there's always vociferous resistance to change.

Posted by: MaxDrei at January 6, 2008 2:10 AM


Maybe my communication wasn't clear. As most patents today use the filing date as priority date, arguing that FTF would somehow change application quality does not appear supported by past evidence.

I had a conversation tonight with a shoe-string entrepreneur. He came to realize that his best hope of surviving the bleeding edge of startup was getting a patent. In my entrepreneurial days, I wanted patents, but couldn't afford it. It would have made a huge difference if I had reprioritized to afford it. I don't think any of that says anything about the pros or cons of FTF.

I'm willing to have my mind changed about FTF. Many of my otherwise kindred spirits think I'm a little loopy being pro-FTF.

I try to view things from what systemically makes sense, not who wins or loses. There are some patent changes I'd like to see (or not see) that would hurt my business, and that would hurt my enforcement prospects. I try not to factor my bony-ass self-interest in either.

If we debate the issues, it accomplishes the purpose of provoking thought and furthering understanding. Regardless of anything pursuant, that alone is a fine accomplishment.

Most important, thanks for reading, and particularly thank you for chiming in.

Posted by: Patent Hawk at January 6, 2008 2:20 AM

The point that interferences are now rare is one that interests me. It can't be that rival apps aren't "interfering" with each other any more because there is more than ever of that sort of interaction in Europe. It must be that US apps also interfere, but you don't need "interference" to deal with it. The European system emerged from struggles between the British and the Germans, each to impose their incompatible patent system on the other. The EPC is thus the stripped down basics of a patent system, containing only those provisions that could not be denied entry, either by the British or by the Germany. If I understand it right, from the contributer above, interference provisions are not a necessary component of FTI. Since interference process is always asserted to be the biggest blight on FTI, why not keep FTI and abolish interferences? Mind you, FTI would still be incompatible with the public policy objectives of a patent system, monopoly as a reward to the first to give the public an enabling disclosure of something new and not obvious (which is still "the deal", even in A publication countries).

Posted by: MaxDrei at January 6, 2008 11:11 PM

Max, you and a I are in near lock-step in favoring a change to FTF in the US, and we are far from being alone.

Where we differ is your insistence that there is a "deal" or a quid pro quo left in the system. There is no such "deal" when applicants are forced to publish their disclosures prior the patent issuing.

The "deal" you refer to is the applicant is forced to reveal everything and then he may or may not get the patent. It's the same "deal," as if the car salesman were to say "Give me $30,000 and I'll decide which car you get, or whether you'll get any." That's no deal. With respect to patents, it's an adhesion contract.

You ask above, so what's the harm. The harm is this: if at the end of the examination the applicant doesn't get the claims he wants, he should have the option to abandon the application and remove all of his disclosures from the public record. No quo, no quid. Currently, it's a one-way street - the quid is mandatory, the quo is contingent.

I'm not arguing that the situation is good or bad. I'm only arguing the narrow point that there is no QPQ and we ought to stop pretending that there is. And we certainly ought to stop misrepresenting to our clients that there is. We should advise our clients: you will have to disclose everything to the world and you may get nothing back.

Posted by: BabelBoy at January 7, 2008 9:04 AM

This is an interesting discussion. Babelboy you speak of "getting" a patent, and I think of getting an issue certificate that might or might not contain a valid claim. You are coming from a system that wraps the grant certificate in a presumption of validity whereas ROW does not. Everybody in ROW knows that most issued claims are going to fail, when not on some other reason then, usually, on art not considered in the PTO. Applicants in Europe cherish 3rd party observations on validity, proferred to the PTO after the A publishes but before issue: they allow Applts to toughen up their apps, before the heavy grant stage fees fall due, and before the oppn period starts. But I do agree with you about bringing it home to clients that they don't get even to examination on the merits without A publication to all the world of their enabling disclosure. Even now, on a European IPR blog (Axel Horns) there is an item about Germany and the fluttering in the patent attorney dovecot about all China assiduously reading the (admirably focussed and compact) A publications of German industry - and then copying hard. Finally, the ROW system is still quid pro quo, as far as I am concerned. IF you cough up an enabling disclosure of patentable matter, THEN you are entitled to a monopoly of a scope commensurate to your contribution. With the German 10 year patent system, you can have your assertable grant certificate issued just 3 months after your filing date, and follow up with a 20 year jobbie issued out of the EPO.

Posted by: MaxDrei at January 7, 2008 12:34 PM

Sorry, the European IPR blog I should have mentioned above is the IPKat blog

Posted by: MaxDrei at January 7, 2008 1:42 PM

It is advantageous for inventors on an international level if patent laws are harmonized across nations.

From an efficiency point of view, harmonization allows for international corporations and individuals that wish to disclose their ideas on a global stage to do so in a cost effective manner.

However, it is important when harmonizing patent laws to consider what is best for the progress of science and the technical arts.

In addition, nations should have some rights to protect their interests. However, the more trivial a law, the more important it is to harmonize that law with the rest of the intellectual property community.

The majority IP treaties where created with the purpose to eliminate such controversies as the one discussed in this blog.

If the vast majority of WTO nations subscribe to first-to-file, then this should be the direction that all nations that are a part of the WTO, including the US.

Moreover it is very difficult to convince developing nations to harmonize their IP laws if we cling to laws that are contrary to the rest of the WTO.

Ben at http://www.windycityip.com/

Posted by: Ben at January 7, 2008 10:23 PM

MaxDrei wrote: "if at the end of the examination the applicant doesn't get the claims he wants, he should have the option to abandon the application and remove all of his disclosures from the public record. No quo, no quid. Currently, it's a one-way street - the quid is mandatory, the quo is contingent."

If a nonpublished application doesn't result in an issued patent, doesn't it stay nonpublished?

Posted by: Noob at January 8, 2008 12:20 PM

Max Drei says to Noob that he should check the thread above. It wasn't MaxDrei that wrote the passage he repeats in quotation marks. rather, it was BabelBoy.
Maybe Babelboy would care to answer. I can't.

Posted by: MaxDrei at January 8, 2008 1:58 PM