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Can anyone shed a light on how the "first to file" change affects prior art? In general "first to file" makes sense to me because it removes uncertainty (who f

Can anyone shed a light on how the "first to file" change affects prior art? In general "first to file" makes sense to me because it removes uncertainty (who filed first is indisputable, determining who invented first requires an expensive lawsuit). But what if I invented something, published it, don't intend to ever file a patent for it and someone comes in and files a patent for that invention? If the can get a valid patent on my invention, it seems wrong and open to abuse (what if they didn't actually invent it but just filed for a patent based on what I published). If they can't get a patent, then "first to file" seems meaningless.

deleted 15y ago
[deleted]
amalcon 15y ago
I am not a lawyer. This is not legal advice. But I did post (what looks to me like) the relevant text of the bill in a previous discussion: http://news.ycombinator.com/item?id=2685141 http://news.ycombinator.com/item?id=2685141
tzs 15y ago
Your publication is part of the prior art, and will block their patent to the extent of your invention. They might be able to patent non-obvious improvements to your invention.
- sukuriant 15y ago
  For varying levels of "non-obvious"
kenjackson 15y ago
But what if I invented something, published it, don't intend to ever file a patent for it and someone comes in and files a patent for that invention? Your published prior art blocks them. If they can't get a patent, then "first to file" seems meaningless. First to file is really about the windows between filiing and inventing. The argument for first to file is generally what you state -- that it helps clear up ambiguity. The argument against is usually small businesses who believe that they may not patent (because they're expensive) until they have something in practice. So imagine you invent some new high efficiency light, and spend the next year getting it working. And once it works and you're convinced of it you file. But you find out that GE patented it a week earlier. But only discovered it a week before that and hasn't made much progress on it (it's only been a few weeks). You still lose the patent, despite the fact that you may be able to prove that (a) you invented first, and (b) have spent the past year implementing it. With that said, the first to file vs invest, IMO is a small part of the reform. The bigger part is the grace period, which now has the following change. In the past you could build an iPhone, ship it, write a paper about it, and file a patent within the next year. Now you can write a paper about it, but can't sell it. Once you sell it, your grace period is over. At least that's my IANAL understanding. And the other big thing in it is they've expanded the timeline of challenging patents. I'm surprised the EFF doesn't have a more coordinated effort to challenge patents when granted.
- extension 15y ago
  Your published prior art blocks them How does it block them? Does it or does it not matter who invented the thing? I am incredibly confused about this legislation.
  - Flenser 15y ago
    If you invented it first, but didn't tell anyone about it, then it's not prior art and anyone else is free to patent it. If you publish details about it, it's prior art and can't be patented.
    - extension 15y ago
      Ok, so the difference with the current system is that publishing the idea is, in itself, the prior art, rather than serving as evidence thereof. As defined in the bill, prior art can be "patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention". It's not a great time to be making laws that depend on a formal distinction between published and unpublished, since that distinction has been just about completely smoothed over by now.

deleted 15y ago

[deleted]

amalcon 15y ago

I am not a lawyer. This is not legal advice. But I did post (what looks to me like) the relevant text of the bill in a previous discussion: http://news.ycombinator.com/item?id=2685141 http://news.ycombinator.com/item?id=2685141

tzs 15y ago

Your publication is part of the prior art, and will block their patent to the extent of your invention. They might be able to patent non-obvious improvements to your invention.

sukuriant 15y ago
For varying levels of "non-obvious"

kenjackson 15y ago

But what if I invented something, published it, don't intend to ever file a patent for it and someone comes in and files a patent for that invention? Your published prior art blocks them. If they can't get a patent, then "first to file" seems meaningless. First to file is really about the windows between filiing and inventing. The argument for first to file is generally what you state -- that it helps clear up ambiguity. The argument against is usually small businesses who believe that they may not patent (because they're expensive) until they have something in practice. So imagine you invent some new high efficiency light, and spend the next year getting it working. And once it works and you're convinced of it you file. But you find out that GE patented it a week earlier. But only discovered it a week before that and hasn't made much progress on it (it's only been a few weeks). You still lose the patent, despite the fact that you may be able to prove that (a) you invented first, and (b) have spent the past year implementing it. With that said, the first to file vs invest, IMO is a small part of the reform. The bigger part is the grace period, which now has the following change. In the past you could build an iPhone, ship it, write a paper about it, and file a patent within the next year. Now you can write a paper about it, but can't sell it. Once you sell it, your grace period is over. At least that's my IANAL understanding. And the other big thing in it is they've expanded the timeline of challenging patents. I'm surprised the EFF doesn't have a more coordinated effort to challenge patents when granted.

extension 15y ago
Your published prior art blocks them How does it block them? Does it or does it not matter who invented the thing? I am incredibly confused about this legislation.
- Flenser 15y ago
  If you invented it first, but didn't tell anyone about it, then it's not prior art and anyone else is free to patent it. If you publish details about it, it's prior art and can't be patented.
  - extension 15y ago
    Ok, so the difference with the current system is that publishing the idea is, in itself, the prior art, rather than serving as evidence thereof. As defined in the bill, prior art can be "patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention". It's not a great time to be making laws that depend on a formal distinction between published and unpublished, since that distinction has been just about completely smoothed over by now.