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August 3, 2008

Hypocrite Nation

The United States has a foolish first-to-invent priority date system for U.S. applicants, but refuses to recognize the filing or invention date of foreign applications for the purposes of prior art, with the infinitesimal exception of the inscrutable 102(e)(2).

Posted by Patent Hawk at August 3, 2008 12:02 PM | Prior Art


That's an odd little rant there, Hawk.

While the U.S. may be stubbornly clinging to FTI and all of our "in this country" requirements in 35 USC 102, I would submit that at the time of the 1952 Patent Act, there were (arguably) good reasons for those provisions.

In re Hilmer is nothing more than the typical result oriented decision that plagues our court system. The judges had a result they wanted to reach, so they concluded that "shall have the same effect as if filed in the U.S." didn't apply in section 119 didn't apply to 102(e). It's annoying, but not really any different from the numerous result oriented decisions that get handed down every day.

I would also submit to you that despite the general cacaphony of outcries you hear in favor of "harmonization," there really isn't a majority, or even a sizable minority, that truly wants it.

Most of us like our system.

Posted by: JD at August 4, 2008 7:55 AM

"infinitesimal exception of the inscrutable 102(e)"

Hawk, did you mean 102(g)? If not can you tell us what the exception in 102(e) is? Apparently, unlike the U.S., Japan and Europe both afford a domestic application which claims priority to a foreign application "prior art" status as of the priority date (i.e., for what the priority application discloses). [EPC Article 89 and JPL Section 29bis.]

Posted by: NIPRA anonymous at August 4, 2008 7:56 AM

"odd little rant" - I often find foreign patent filings that predate the U.S. filing date, but don't count as prior art under U.S. law.

102 (e) the invention was described in - ... (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, 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;

JD, you may have a point about 1952. The times do change, and the pace of innovation has quickened.

Harmonization is not a concern of mine, other than efficiencies it may afford, which could be considerable. In other words, if foreign law were contrary to the tenets of equity, novelty, and efficiencies in prosecution examination and/or litigation, harmonization would not be entirely advantageous, to my thinking.

The points are that: 1) first-to-invent leaves an uncertain priority date that complicates validity, creating a potential shell game; and 2) U.S. law does not require that an invention be novel to get a U.S. patent. I think that is wrong. U.S. law is, in a nutshell, a game of publication in English. The U.S. does not recognize a foreign patent filing date in non-English, which later becomes a U.S. patent, for the purposes of prior art, but does recognize, as prior art, an abandoned drawing, never published (but considered as such by the courts), filed in the Canadian patent office.

I think absolute novelty ought to apply to receive a patent. A patent is, after all, a government grant of monopoly for quite a duration, and may have considerable economic value. I think that if your patent application filing date does not show that you were the first to invent, worldwide, you should not receive a U.S. patent application. It would cut out marginal inventions, in a different way as KSR, but to the same effect, of raising the bar of novelty required for patent protection.

First-to-invent has the potential of inefficiencies, as most readily witnessed by the interference procedure.

A patent is important enough a grant that, yes, there ought to be a rush to the patent office.

Posted by: Patent Hawk at August 4, 2008 9:24 AM

"I often find foreign patent filings that predate the U.S. filing date, but don't count as prior art under U.S. law."

That's what I figured.

It happened to me when I was an examiner. Find a good reference, but you can't use its section 119 foreign priority date. Had to just let it go.

Agree with you on absolute novelty. But I think the debate between FTI and FTF is a little overblown. Since the creation of provisional applications by the AIPA most "institutional" or "systematic" (i.e. large) filers have taken to filing provisional applications to secure priority to dates and to prevent the loss of world wide rights caused by publication/use/offer for sale/sale/etc. I don't think there are that many people left who are relying on the one year grace period. Maybe a few pro se's, but anybody who is getting competent legal advice should be filing provisionals when they are warranted.

We advise all of our clients to file a U.S. provisional any time there is going to be a disclosure/offer for sale/sale/etc. Even if that provisional is just the inventor's notes. If the invention doesn't pan out in a year, and a non-provisional isn't filed, the provisional does not become public and nothing is lost.

I think there already is a rush to the Patent Office (e.g. because of the fear of loss of rights outside the U.S.). Under our system, however, the first to invent is rewarded, not the first to file. Again, I think most people in the U.S. like our system and wouldn't want to give it up. I certainly don't want to. Getting sued for malpractice because somebody beat me to the Patent Office by one day does not appeal to me.

Interferences are messy and expensive, but there are relatively few (compared to, for example, the percentage of oppositions at the EPO, which are also messy and expensive) and the changes made by the PTO (e.g. the trial section) are one of the few, very few, success stories coming out of the PTO.

I don't think anything should be done until competent management is put in place at the PTO. As my father would say, "Those guys could screw up a one car funeral."

Posted by: JD at August 4, 2008 9:58 AM

Of course no US patent attorney looks at harmonisation with any enthusiasm. But cases like Hilmer give ROW the impression that the USA is the schoolyard bully, who takes candy from any smaller child who wants entry. "If you don't like the entry fee, you don't have to join. You can file your app anywhere in the world you like, but maybe you should file first in the USA" However, one day in the schoolyard, there's a bigger child than the bully. Should he make his own Hilmer Doctrine? What do the other children say? One day China might say "You can file anywhere you like, as long as it's in China" But I can't believe that China would have the bare-faced cheek.

Posted by: MaxDrei at August 4, 2008 10:54 PM

"Even if that provisional is just the inventor's notes"

You want to be very careful about that if you ultimately plan to file outside the USA. Inventor's notes are unlikely to provide a sound priority basis for a well-drafted claim, so any public disclosure of the invention between filing the provisional and filing proper claims will likely invalidate the resulting patent.

Posted by: EUgenius at August 5, 2008 3:57 AM

As odd as it may seem, I agree 100% with what JD says above.

While it IS irritating to find a ref that claims foreign priority and you can not use it because you can not use the foreign date, to change to first to file has a lot of problems itself, as pointed out above.

IIRC, wasn't the system 1st to file way back when during the time of Edison and that allowed him to get his application in for the phone in very shortly before the competition?


Posted by: Michael Valentine Smith at August 5, 2008 4:47 PM

This post did put together two very different aspects: 1) first-to-file vs. first-to-invent; and 2) respecting foreign prior art. But they both represent U.S. uniqueness.

The rest of the world has first-to-file. It works, and from a standpoint of simplicity, which translates to cost, is advantageous. The supposed negatives are niggling.

It is revealing how the comments went to self-interest, without regard to systemic quality.

Not respecting novelty is simply arrogant. That, alas, is not unique to the U.S., but Americans live it large.

Posted by: Patent Hawk at August 5, 2008 6:34 PM

Hawk, Hilmer is in breach of the Paris Convention. You say "arrogant" but maybe the USA, having achieved so much, can be forgiven a modicum of arrogance. My thinking is that today "soft power" is vital, and it would be nice to see the USA wielding its enormous soft power for the benefit of Planet Earth, but nations who are insouciantly and wilfully in breach (since 1952) of an International Convention find it correspondingly harder to get all those other nations lined up behind its position, on anything. So, Hilmer works against the US national interest, no?

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

"It is revealing how the comments went to self-interest, without regard to systemic quality."

Well, yeah, I am self interested. But I don't think I ignored quality.

As the rest of the world has absolute novelty, most patent filers get something into the PTO whenever there's going to be a publication/disclsoure/use/offer/sale/etc. I don't think the grace period is being used by too many. I may be wrong though.

I think FTI promotes quality of applications. It allows the applicant and attorney to ensure that the application is really solid before filing, without fear that all of the rights are going to be lost because somebody beat them to the PTO by one day.

If we switched to FTF, I think you will see an increase in applications, and those applications will be of lower "quality" because of the rush to file them. Given the current state of the USPTO, I can't see that as a good thing.

I must say I don't understand the hand wringing over our interference procedure. As I said, it is messy and expensive, but it involves such a relatively small percentage of applications/patents. I think post grant opposition would be an even bigger mess. The PTO is not, and never will be, prepared to handle such proceedings. Unless they can somehow magically increase the size of BPAI ten fold. That's not going to happen.

Max makes good points as usual, but on this, we'll just have to agree to disagree.

Posted by: JD at August 6, 2008 5:16 AM

JD, can't you keep FTI and do something about Hilmer? Or are they a package? As to FTF resulting in rushed apps, I would counter with the subversive suggestion that FTI results in lawyer-overblown (as opposed to "solid") apps. and that FTF will work because every FTF tribunal knows that it must (to be fair) factor into its deliberations a recognition that 1) everybody is human, and 2) everybody's under the cosh to get to the PTO first so 3) errors and inexactitudes will occur and should not bring the whole house down. But we can agree to disagree, on that solid substantive point. US apps are three times the length of anybody else's, and that's not because engineers outside the USA are three times as smart.

Posted by: MaxDrei at August 6, 2008 7:28 AM


I think we can get rid of Hilmer. However, if the examiner is going to rely on the foreign priority date of a U.S. Patent (or published U.S. app), the examiner should be under an obligation to provide the applicant with a copy of the reference's foreign priority application to establish that it does in fact include the material relied on in the rejection.

I constantly have U.S. examiners citing me U.S. patents and published apps and telling me that they are relying on the filing date of a U.S. provisional(s) to which priority is claimed. But they never go and review that provisional(s) to establish that the portions they are relying on are supported by the provisional's filing date.

We need to fix a lot. Let's get U.S. examination out of the bottom of the garbage can where it is currently residing, and then worry about Hilmer.

U.S. apps are long to prevent silly rejections for lack of written description, non-enablement, and new matter. If U.S. examiners understood these concepts at all, and stopped making silly rejections, you would probably see the length of U.S. apps reduced.

Posted by: JD at August 6, 2008 8:01 AM

Thanks for the comments. The "odd little rant" seems to have turned into a meaningful exchange.

First-to-invent does not only play in interferences. First-to-invent is a specter over every litigation where the inventor has not already sworn back. Because, under first-to-invent, practically every inventor who used a prosecutor can swear back, weeks or possibly a month or more, to the date where the inventor completed his portion of the claimed invention, before the prosecutor started his write-up. That makes the date at which prior art kicks in uncertain.

Uncertainty is what turns litigation into a crap shoot, and raises the cost of enforcement, and defense. That’s the problem with first-to-invent: it makes the patent system more expensive. Unnecessarily.

The idea that first-to-invent promotes quality is unsupported. The rest of the world has first-to-file. I know of no evidence that foreign applications are any more deficient than U.S. applications. The objection that first-to-file would result in lower quality applications appears a fantasy straw man, with no evidential basis.

The quality of USPTO examination is a completely different issue. Everyone with any sense of the patent system in the U.S. today has a sense that the Dudas administration has been corrupt, even extra-legal, as well as inept. That simply corresponds neatly with the Bush administration.

Overwriting applications out of fear of §112 ¶1 is a statement of incompetence. Incorporation by reference is the easiest way to ensure §112 ¶1 compliance. That requires having the prior art at one’s finger tips, of course. Every quality patent starts with a patentability search.

Posted by: Patent Hawk at August 6, 2008 10:21 AM

"That makes the date at which prior art kicks in uncertain."

102(b) art is certain.

Anything more than 1 year before the U.S. filing date is pretty certain.

"The idea that first-to-invent promotes quality is unsupported. The rest of the world has first-to-file. I know of no evidence that foreign applications are any more deficient than U.S. applications. The objection that first-to-file would result in lower quality applications appears a fantasy straw man, with no evidential basis."

It's supported anecdotally (sp?). When I'm prosecuting 371's that entered the national phase from a PCT filed in the EPO, I'm more likely to get written description, non-enablement, and new matter rejections than what I get in regular old U.S. non-provisionals. I agree that FTF is not solely the reason for that, and is more likely due to the EPO's superior examiners (who aren't the pendantic count grubbers our U.S. examiners are) not entering silly rejections, but I don't think you can totally disregard the effect that the race to the patent office has on application drafting.

As somebody who writes applications, I want to get it right. Being first is nice too, but it's not more important than being right. Under our system, I have that "luxury," and don't want to give it up. I'm selfish.

IBR can be risky. I don't think it's the panacea you seem to suggest it is.

Posted by: JD at August 6, 2008 11:29 AM

JD: of course you are selfish for your clients. Quite right too. So am I. As I say, no US attorney will be comfortable entering the strange world of FTF. The way I see it though, you can't have it both ways. Either parties (Motorola and Nokia, or Boston Sci and Terumo, or SAP and Oracle) invent similar stuff at close dates. Or they don't. If they do, then we will be looking intensively at their respective priority documents, but also there ought to be interference situations too. You can't say that FTF gives multitudious hours picking over prio docs in most every case, while FTI gives hardly ever an interference. In FTF, sometimes the content of the prio docs is decisive, but not often. Note, however, that when there is to be a priority contest, with FTF it's closed-ended. The prio docs and no more. Can't say that about FTI, can we? AND:everybody can look at the prio docs, 18 months after that date, and make business decisions. who gets to look at the lab notebooks. And when, exactly? I thought Americans liked transparency. That's what they tell me anyway, when they see my invoices. The thing about patent attorneys and drafting is that, these days, they do have to get it right first time. After the end of the Paris year, you don't get a second chance. also in your country, I believe. Getting it right first time is what justifies our prodfessional fees. American companies don't value drafting skills highly enough. In Europe, look at the pass rates, to qualify by examination as a patent attorney. An awful lot of candidates fail the drafting paper. Drafting ain't easy, I agree with you.

Posted by: MaxDrei at August 6, 2008 10:05 PM

Hawk: beware incorporation by reference to an unpublished doc (like a US pat appln not yet published). Such documents don't count, at least in Europe, towards the sufficiency of disclosure within the app, to a member of the public reading the A publication.

Posted by: MaxDrei at August 6, 2008 10:09 PM

"American companies don't value drafting skills highly enough."

Max, that statement may be a little too sweeping. Some do. Some don't. The key is to figure out which ones do, and get their work.

I would think I would need to make some adjustments to FTF. But I certainly don't view FTF as the apocalypse.

Posted by: JD at August 7, 2008 6:56 AM

JD: Too sweeping, I agree unreservedly. Being sweeping is one of the pleasures of blogging anonymously. I find it provokes replies. Have a nice day, JD.

Posted by: MaxDrei at August 7, 2008 8:03 AM