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That's ridiculous! Inventor A should obviously always win, since he actually implemented his idea before B did. B could have seen A's idea and filed a patent on

That's ridiculous! Inventor A should obviously always win, since he actually implemented his idea before B did. B could have seen A's idea and filed a patent on it.

monochromatic 15y ago
I'm not sure that's obvious. (And by the way, we're talking about conception of the idea, not actual implementation. You can patent something that you haven't yet prototyped.) Anyway, the entire rest of the world uses a first to file system, so bear that in mind when you say that first to invent is obviously correct.
- kragen 15y ago
  Don't you have to prototype it to "reduce it to practice"? I thought you couldn't patent ideas that hadn't been reduced to practice.
  - monochromatic 15y ago
    Filing a patent application is a constructive reduction to practice.
    - tzs 15y ago
      Just to make sure no one gets the wrong idea, it should be noted that the law requires: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. (35 USC 112). So, even though filing counts as constructive reduction to practice, that doesn't mean you can just come up with a vague idea, write it up with no clue how to actually make the device, and get a patent. (Well, you aren't supposed to be able to--the examiners sometimes slip up!). You don't actually have to have built a working prototype, but you have to be telling people in the patent how they can actually build the thing.
      - lisper 15y ago
        > the examiners sometimes slip up The examiners often slip up. That is really the nub of the problem. The examiners are incentivized to close cases, not to make the right decisions. So if you badger an examiner enough you can get them to sign off on just about anything, e.g. U.S. patents 6368227 and 7126691.
tzs 15y ago
He said A came up with the idea first, not that he implemented it first. You could have this timeline: A comes up with the idea, starts working on implementing B later, independently comes up with the idea, and start working on implementing B completes implementations, files for patent A later completely implementation, files for patent Under first to invent, A wins even though B implemented first. Under first to file, B wins. > B could have seen A's idea and filed a patent on it A could challenge B's patent on the grounds that B was not an inventor.
- monochromatic 15y ago
  All true. I was just trying to brush all this stuff about conception, reduction to practice, diligence, etc. under the rug.
- WiseWeasel 15y ago
  Thanks for your detailed response! If that's truly the case, then I could support this move to first-to-file. One worry I have is that the order might often be more like: A comes up with the idea, starts working on implementing B later, independently comes up with the idea, and starts working on implementing B files patent application describing a grossly simplistic, untested implementation of the idea A later completes implementation, irons out the bugs, files for a patent, starts a business, adds great value to the economy B never really does much with his patent, ends up selling it off to C who sues A for mucho $$$ in patent licensing, or sells it to A's competitor D for mucho $$$, so they can copy A's product with impunity.
  - monochromatic 15y ago
    Is this situation really better under the current law though? If you change the situation so that B had the idea first, but the rest of the facts are the same, then the current law produces the same problems.
    - WiseWeasel 15y ago

That's ridiculous! Inventor A should obviously always win, since he actually implemented his idea before B did. B could have seen A's idea and filed a patent on it.

monochromatic 15y ago

I'm not sure that's obvious. (And by the way, we're talking about conception of the idea, not actual implementation. You can patent something that you haven't yet prototyped.) Anyway, the entire rest of the world uses a first to file system, so bear that in mind when you say that first to invent is obviously correct.

kragen 15y ago
Don't you have to prototype it to "reduce it to practice"? I thought you couldn't patent ideas that hadn't been reduced to practice.
- monochromatic 15y ago
  Filing a patent application is a constructive reduction to practice.
  - tzs 15y ago
    Just to make sure no one gets the wrong idea, it should be noted that the law requires: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. (35 USC 112). So, even though filing counts as constructive reduction to practice, that doesn't mean you can just come up with a vague idea, write it up with no clue how to actually make the device, and get a patent. (Well, you aren't supposed to be able to--the examiners sometimes slip up!). You don't actually have to have built a working prototype, but you have to be telling people in the patent how they can actually build the thing.
    - lisper 15y ago
      > the examiners sometimes slip up The examiners often slip up. That is really the nub of the problem. The examiners are incentivized to close cases, not to make the right decisions. So if you badger an examiner enough you can get them to sign off on just about anything, e.g. U.S. patents 6368227 and 7126691.

tzs 15y ago

He said A came up with the idea first, not that he implemented it first. You could have this timeline: A comes up with the idea, starts working on implementing B later, independently comes up with the idea, and start working on implementing B completes implementations, files for patent A later completely implementation, files for patent Under first to invent, A wins even though B implemented first. Under first to file, B wins. > B could have seen A's idea and filed a patent on it A could challenge B's patent on the grounds that B was not an inventor.

monochromatic 15y ago
All true. I was just trying to brush all this stuff about conception, reduction to practice, diligence, etc. under the rug.
WiseWeasel 15y ago
Thanks for your detailed response! If that's truly the case, then I could support this move to first-to-file. One worry I have is that the order might often be more like: A comes up with the idea, starts working on implementing B later, independently comes up with the idea, and starts working on implementing B files patent application describing a grossly simplistic, untested implementation of the idea A later completes implementation, irons out the bugs, files for a patent, starts a business, adds great value to the economy B never really does much with his patent, ends up selling it off to C who sues A for mucho $$$ in patent licensing, or sells it to A's competitor D for mucho $$$, so they can copy A's product with impunity.
- monochromatic 15y ago
  Is this situation really better under the current law though? If you change the situation so that B had the idea first, but the rest of the facts are the same, then the current law produces the same problems.
  - WiseWeasel 15y ago