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Is there any way in which first-to-file is better for innovators ? With the new law, if you invent something and someone else can patent it 5 years later, that

Is there any way in which first-to-file is better for innovators ? With the new law, if you invent something and someone else can patent it 5 years later, that person can sue you (the inventor).

tzs 15y ago
If you invent it an keep it secret, then yes, someone else might patent it later. However, the same was true under the old law. (And assuming you were using your invention, say as part of an internal process, you'd have a defense of prior user rights under both laws). If you invent and do not keep it a secret, then that person five years later (under both the old and new law) would be out of luck as your invention would be prior art.
- alanX 15y ago
  Right. Because the patent office would never allow a patent on toast. Patent number: 6080436 Filing date: Jun 14, 1999 Issue date: Jun 27, 2000 What is claimed is: 1. A method of refreshing bread products, comprising: a) placing a bread product in an oven having at least one heating element, b) setting the temperature of the heating elements between 2500 F. and 4500 F., and c) ceasing exposure of the bread product to the at least one heating element after a period of 3 sec. to 90 sec. 2. The method of claim 1 including the step of exposing the bread product to electromagnetic radiation in the wavelength range between 1.2 and 3.4 microns. 3. The method of claim 1 including the step of selecting said bread products from rolls, muffin, buns and bagels.
  - learc83 15y ago
    Yeah, the patent office fails to find prior art all the time. But the OP wasn't saying any different. He was only pointing out that the first to file change doesn't affect prior art.
Tuna-Fish 15y ago
Patents are not given as prizes for the act of invention -- they are given for prizes for the act of sharing your invention with the rest of the world. Also, so long as you can prove prior art, the patent is worthless.
- marshray 15y ago
  No, even if one can easily prove prior art, the patent is worth some portion of the hundreds of thousands of dollars it would cost to do so in court.
  - law 15y ago
    Court isn't the only route to patent invalidation. When a plaintiff sues a defendant for patent infringement, there are usually two defenses brought up: "I'm not infringing on your patent" and "even if I were, your patent is invalid." Prevailing on the latter defense begets invalidation. Third parties can also file ex parte or inter partes reexamination request, through which the third party can ask the USPTO to reexamine the patent to verify the patentability of the claimed subject matter. The fee for requesting an ex parte proceeding is $2520, and after filing the request, the third party no longer actively participates in the proceedings. Third parties filing an inter partes request, after paying the $8800 fee, may continue to participate in the proceedings.
    - marshray 15y ago
      So typically what are the total out-of-pocket fees for filing these requests including the bill from competent lawyer? How likely are they to succeed in invalidating an issued patent? If done poorly, couldn't they have the potential to actually reinforce a lousy patent? Is this "cheap" course of action actually available if you're already being sued over some bogus patent you didn't know existed (or didn't choose to pay for the reexamination) in advance?
- igorlev 15y ago
  Not a prize. More like a fair trade where government offers their powers of enforcement to guarantee your monopoly and you offer a detailed explanation of your invention so that everyone else can use it freely after the patent expires.

Is there any way in which first-to-file is better for innovators ? With the new law, if you invent something and someone else can patent it 5 years later, that person can sue you (the inventor).

tzs 15y ago

If you invent it an keep it secret, then yes, someone else might patent it later. However, the same was true under the old law. (And assuming you were using your invention, say as part of an internal process, you'd have a defense of prior user rights under both laws). If you invent and do not keep it a secret, then that person five years later (under both the old and new law) would be out of luck as your invention would be prior art.

alanX 15y ago
Right. Because the patent office would never allow a patent on toast. Patent number: 6080436 Filing date: Jun 14, 1999 Issue date: Jun 27, 2000 What is claimed is: 1. A method of refreshing bread products, comprising: a) placing a bread product in an oven having at least one heating element, b) setting the temperature of the heating elements between 2500 F. and 4500 F., and c) ceasing exposure of the bread product to the at least one heating element after a period of 3 sec. to 90 sec. 2. The method of claim 1 including the step of exposing the bread product to electromagnetic radiation in the wavelength range between 1.2 and 3.4 microns. 3. The method of claim 1 including the step of selecting said bread products from rolls, muffin, buns and bagels.
- learc83 15y ago
  Yeah, the patent office fails to find prior art all the time. But the OP wasn't saying any different. He was only pointing out that the first to file change doesn't affect prior art.

Tuna-Fish 15y ago

Patents are not given as prizes for the act of invention -- they are given for prizes for the act of sharing your invention with the rest of the world. Also, so long as you can prove prior art, the patent is worthless.

marshray 15y ago
No, even if one can easily prove prior art, the patent is worth some portion of the hundreds of thousands of dollars it would cost to do so in court.
- law 15y ago
  Court isn't the only route to patent invalidation. When a plaintiff sues a defendant for patent infringement, there are usually two defenses brought up: "I'm not infringing on your patent" and "even if I were, your patent is invalid." Prevailing on the latter defense begets invalidation. Third parties can also file ex parte or inter partes reexamination request, through which the third party can ask the USPTO to reexamine the patent to verify the patentability of the claimed subject matter. The fee for requesting an ex parte proceeding is $2520, and after filing the request, the third party no longer actively participates in the proceedings. Third parties filing an inter partes request, after paying the $8800 fee, may continue to participate in the proceedings.
  - marshray 15y ago
    So typically what are the total out-of-pocket fees for filing these requests including the bill from competent lawyer? How likely are they to succeed in invalidating an issued patent? If done poorly, couldn't they have the potential to actually reinforce a lousy patent? Is this "cheap" course of action actually available if you're already being sued over some bogus patent you didn't know existed (or didn't choose to pay for the reexamination) in advance?
igorlev 15y ago
Not a prize. More like a fair trade where government offers their powers of enforcement to guarantee your monopoly and you offer a detailed explanation of your invention so that everyone else can use it freely after the patent expires.