First to File Patent Law Coming Soon to USA
On June 23, 2011 the House of Representatives passed the "America Invents Act." A similar Bill passed in the Senate last March. Both Senate and House passed their Bills by large majorities. They will now merge the two Bills into one (a process called "reconciliation") and pass it on to President Obama. The President has said he will sign it. The law will switch America from a first-to-invent system to a first-to-file system. The law will also expand the type of ‘prior art’ that can be considered for patentability and sets up a new process for challenging patents at the patent office. It's a big win for the big guys and will mean substantial changes in how independent inventors develop their inventions.
Currently an inventor can claim the right to a US patent if the inventor can prove that he or she was the first to invent. The surest proof has long been a filed patent application. But other kinds of proof are acceptable - dated journals, photographs, letters, videos and the like can be used to substantiate a claim of inventorship as of a certain date. When the new law passes, the only thing that will matter is the filing date of the patent application. This will bring US patent law into line with Europe and other parts of the world.
Practically speaking, in the trench warfare of patent litigation, a patent filing date trumps a tattered journal almost every time. The new law will extinguish what has long been a weak claim for inventorship and, hopefully, eliminate lawsuits that had virtually no chance of success.
For independent inventors the new law will mean more reliance on non-disclosure agreements and use of provisional patents. Inventors will need to be more serious and focused.
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Inventor and patent attorney
Why hasn't every independent inventor and small business risen up to oppose this bill. Don't they understand it will end the American dream. It will increase the cost of a patent from the current average cost of $38,000 (Berkeley study) by an order of magnitude. The "catch" of not being able to raise money until you have a patent, is now you will not be able to get a patent until you raise money. This bill was designed by the big New York banks and the giant IT firms to make sure little inventors would find it almost impossible to receive a valuable patent, so the big firms could practice (or infringe) with impunity. If this bill passes, inventors have two choices, hire a several person patent staff, or go without patent protection. All of your competitors will now be able to flood the patent examiner with "prior art", delaying issuance by years. If the small inventor is still in business, competitors can come back again for post grant review. Finally, the change in damage provisions will make it unlikely that any meaningful damages will be awarded. Go see your congressman and oppose passage when it comes back from conference.
by: Robert N. Schmidt
I'm still stunned that this passed
I saw this a few months ago and thought, that's a foolish idea. It will never pass. Then I went back to work, hoping that common sense would win the day. I'm going to send a few complaints and requests that this legislation be repealed. Stunning!
by: Tony Gruber
It's actually worse than it seems...
As Prof. Dennis Crouch of Patently-O has pointed out, and as the first commenter here alluded to, the main problem with this bill is not "first to file" vs. "first to invent." It's that under the new law, a ton of additional prior art--including prior art that the inventor had no way of knowing about--will now be fair game to be used against the inventor upon submission to the USPTO. Here is why: Under first-to-invent, your critical date is the date of your invention. The relevant prior art which you must overcome is all the known prior art that existed up to the time of your invention date. But under first-to-file, your critical date will be the date of your filing. The relevant prior art which you must overcome is all the prior art that was known or filed, potentially right up to the date of your filing. This means that unpublished patent applications, filed up to the date of your own filing, but not visible to the public eye, could now be used against you (if I understand the proposed law correctly). So now you not only will have the high cost of the patent preparation and filing, but you are playing with a much greater unknown: is it worth the risk to file this expensive application, and to develop this product? Or did someone already file this invention before me? Now, how is this scenario different from our current first-to-invent system? Under our current system, you get to record an invention date, perfect the invention in secret prior to taking it to market, and then file a patent application just prior to market launch. The time between your invention date and your market launch / patent filing date is kind of a testing-ground. While you are developing the product, you are also waiting to see whether anyone else has come up with similar art, either on the market or in patent applications filed during your development period. Then you have a much better sense of whether to file an application at all. One word about interference actions (expensive legal battles over who-truly-invented-this-first). The head of the USPTO talked out of both sides of his mouth by saying that this bill will help small businesses because it will avoid costly interference actions, which he says (although I have no data on this) that small businesses usually lose. Yet the fact is that such fights occur in a vanishingly small percentage of cases--less than 1% of all filed applications. Moreover, one can usually tell who is going to win an interference action because they are usually won by those who filed first anyway. Now, let's look critically at that fact: the fact that those who win interference actions were those who were first to file. What does it mean? Does it mean we should simply switch to a first-to-file system, and save everyone the headache? NO. It means only that those who are first to file, like those who are first to market, have shown that they were willing and able to do the hard work of reducing their invention to practice. Those who filed later were slower to invent, or less willing to commit the resources to bringing the product to market. And it is after all the social contract between inventor and the public that the inventor is given a temporary monopoly on an invention in exchange for benefiting the public with a marketable product. So we like to favor the person who has shown the greater commitment to turning an invention into a marketable product. Let me make ti clear: it is absolutely disingenuous for the head of the USPTO to say that "switching to a first-to-file system would settle the problem" of interference actions and thereby help small businesses. When we turn first-to-file from a marker of success to a universal requirement, it will absolutely distort the playing field and cripple the invention process. Currently, small inventors can at least go to big companies with their secret latest idea, a mutual nondisclosure agreement, and a previously-recorded invention date. What will small inventors do in the future? Does the USPTO, or any of our wonderful congresspeople, have any good advice about that? Nope. Now, you can say, so what if small inventors lose? It's not a big deal. But the fact is that invention itself will lose. The entire marketplace game will shift from who has the best invention to who has the cheapest knockoff that everyone else is copying? The race toward lower production costs will send even more jobs overseas. But of course, the pockets of our elected and appointed officials are deeply lined with dollars from very large companies who are already busy sending jobs overseas. Who am I? I am not an attorney, but I am an inventor with a lot of patent experience. A pox on the current administration and the current head of the USPTO for encouraging this damaging, invention-threatening legislation during a time of economic uncertainty.
by: Patrick