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May 18, 2009

First to Flunk

A first-to-file patent priority regime is rationally done using absolute novelty, that is, no grace period. That is not what Sen. Leahy has for Senate Bill 515, the currently proposed abomination posing as patent reform. Hal Wegner reports on the convolutions involved in Leahy's fantasy version of first-to-file.

Mr. Wegner:

Faux First-to-File: The first-to-file system envisioned by Leahy S.515 has a gaping loophole for the inventor who first discloses his invention to be free from prior art even though a second party publishes before the filing date if there is some "indirect[ ]" link from the second party to the first disclosure.

Furthermore, if the second party even with such an "indirect[ ]" link publishes a slightly different invention in the interval, this is prior art for purposes of determining obviousness of the first inventor's later filed application: This effectively nullifies the "indirect[ ]" link provision. Even more troubling is the obviousness effect of a prior-filed but later-published application as of the priority date, which is completely antithetical to the international norm as practiced in Europe, Japan and elsewhere.

Interference Proceedings Cloaked as "Derivation Proceedings": The good news is that patent interferences are eliminated. The bad news is that interferences have been renamed as derivation proceedings. To be sure, priority may not be established in a derivation proceeding by proving an earlier independent date of invention. But, priority may still be contested based upon priority keyed to one or more parent applications as part of the uniquely American continuing application practice. There is nothing in the current legislation to curb continuing application abuse.

If there are, say, five parent applications with varying disclosures, this presents the same opportunity to prove priority of invention as today, except that the priority must be keyed to a parent application. A derivation proceeding may be declared between different inventions that are to obvious modifications.

Posted by Patent Hawk at May 18, 2009 9:44 AM | The Patent System


Readers interested in discussing the operative language of the bill see here.

Posted by: Michael F. Martin at May 18, 2009 10:00 AM

Wonder from whom Leahy has recently received large campaign contributions.

Posted by: John Prosecutor at May 18, 2009 12:29 PM

My understanding is that Leahy is not the brightest star in our governmental universe...


He was apparently kicked off the Senate Intelligence Committee; he should not be trusted to fiddle with our great patent system.

Posted by: Just sayin' at May 18, 2009 9:14 PM

Hooray. At last people are starting to realise, and argue, that unreformed 102 and 103 are incompatible with a FtF system that has any chance of functioning. A foul compromise is not a "reform". Stay as you are, please, or else adopt the FtF model that the rest of the world uses. There is no half way house (you give something, we give something) on this.

Posted by: MaxDrei at May 18, 2009 10:42 PM

What is so bad about interference proceedings? How else can first to invent priority be determined?

I take it Hawk that you are a proponent of FTF? Shame on you. If you're not (shame withdrawn) how can you consider the elimination of interference "good news?"

Posted by: Just sayin' at May 19, 2009 9:22 PM

Yes, I've long favored first-to-file coupled with worldwide absolute novelty. None of this patent publication date nonsense. Whoever got it to a patent office anywhere first deserves the patent right, and any Johnny-come-lately should be left with fumes. The America-first syndrome for novelty in play now is imperialistic.

If you want a patent grant, the obligation to file is reasonably paramount. And patents should only be granted to novel inventions. It's that simple.

Any other combination, such as Sen. Leahy's, is half-baked, and that means half-assed.

Posted by: Patent Hawk at May 19, 2009 9:34 PM