16 ms·

March 16, USPTO switches from 'first to invent' to 'first to file'

• hayksaakian 14y ago
  The title makes it sound bad, and in a perfect world it is bad, but in the real world filing a patent is more important than inventing (for better or worse). The only person who can prove the first inventor is a lawyer, and this is who the change is aimed at. This change makes that fact the law.
  • tptacek 14y ago
    This is a series of non sequiturs. "First to file" does not dispense with the need to invent. The requirement to provide a best known mode of implementation that is tied to the claims of the patent is no different under this system than under "first to invent". The difference between the two schemes is limited entirely to cases where two parties both file for a patent on the same invention at the same time. There's an evident misconception here, and it's clear where it comes from; we "moved" from "invent" to "file", which makes it sound like you don't have to "invent" anymore. But no, that's not what the change means. (Obviously, first-to-file does nothing to eliminate the problem of the USPTO rubber stamping comically stupid patents.)
• randall 14y ago
  Is this really true? Seems wrong... can someone weigh in? Edit: http://en.wikipedia.org/wiki/First_to_file_and_first_to_invent http://en.wikipedia.org/wiki/First_to_file_and_first_to_inve...
  • yaddayadda 14y ago
    What are you seeing in the wikipedia article that is making you question it? I'm seeing a section dedicated to this subject http://en.wikipedia.org/w/index.php?title=First_to_file_and_first_to_invent&oldid=533729945#The_USA.27s_change_to_first-inventor-to-file_.28FITF.29 http://en.wikipedia.org/w/index.php?title=First_to_file_and_... (there may be newer versions, but this version has been up since you made your comment)
• ComputerGuru 14y ago
  Wow, if true this is huge. America's been pretty much the last to stick to the first to invent system (all of Europe is first to file, as well as most Asian countries I've looked into, though I could be missing some!) and it's been the cornerstone of zillions (ok, I exaggerate a little) of lawsuits and patent reversals. Glad I got my patent application in last year (worry not HNers who are against software patents, 'twas an application for a mechanical doohickey).
  • Arelius 14y ago
    > worry not HNers who are against software patents Well I guess those HNers among us who are against all patents will continue to worry then. ;)
    • deleted 14y ago
      [deleted]
    • ChrisNorstrom 14y ago
      Being against all patents is an extreme position. Imagine investing 10 years and Hundreds of millions of dollars into making a brand new revolutionary motor for train propulsion. And having it ripped off within the first year of commercially using it because it wasn't patented.
      • MichaelGG 14y ago
        The point of patents (at least in the US) is to benefit society. The question is if granting a monopoly on ideas is actually benefiting society. Thomas Jefferson wrote: "That ideas should freely spread from one to another over the globe ... seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, ... incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property."[1] He then goes on to point out that patents "may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody". Given the abuse of the patent system and little evidence of it benefiting society, it's hardly an "extreme position" to be against patents. 1: http://press-pubs.uchicago.edu/founders/documents/a1_8_8s12.html http://press-pubs.uchicago.edu/founders/documents/a1_8_8s12....
• adamnemecek 14y ago
  Call me the village idiot but is this good or bad?
  • tptacek 14y ago
    Good. Infrequent colliding patent applications are cheaper to resolve, and prior art challenges get stronger.
    • DannyBee 14y ago
      What he said (i'm a registered patent attorney). It's mostly good, though there was some bad/ambiguous wording in the original AIA that is now "mostly fixed". The thing to remember is that first-to-file doesn't mean that if i file a patent app on something you invented, before you do, that I get a patent. It's about what happens when two people file patent apps for things they can both prove they invented. Before, there was a complex system of colliding patent resolution. Now, it's "first guy to file wins". More things are also now prior art. You can't get around prior art by showing you invented before the prior art was published, for example.
      • bo1024 14y ago
        Thank you, this: > The thing to remember is that first-to-file doesn't mean that if i file a patent app on something you invented, before you do, that I get a patent. It's about what happens when two people file patent apps for things they can both prove they invented. was very helpful in clarifying.
  • Daniel_Newby 14y ago
    Bad, horrifically bad. An insider can find a trade secret, that may not even be recognized as a trade secret, and leak it to another company for patenting. The true inventor then gets their business shut down. Another failure mode is that computer spies steal the IP via a software security flaw, then patent it as their own independent reinvention.
    • deleted 14y ago
• tptacek 14y ago
  Contrary to popular opinion (because "first to file" sounds insidious), whatever marginal effect this change is going to have will likely be positive. The intent of the change is to harmonize the US with EU on a corner case of patent law, where two entities file for a patent on the same invention during the same window of time. The new rule says that instead of clubbing each other over the head with lawyers, the first filing simply wins. More importantly, the rule changes strengthen prior art challenges to applications.
  • jordanb 14y ago
    I think another important point is that it removes a lot of potentially expensive litigation and discovery on who was actually the "first to invent" from a patent case.
  • lambda 14y ago
    I think the issue that's concerning is that this increases the necessity to obtain a patent on any novel idea, lest someone else copy your idea, patent it, and then sue you for implementing your own idea. This means that now, every time you come up with some new idea, you need to spend all the time, money, and effort to patent it (and hope, in the process, that you don't come across an existing patent for that idea, since now your infringement of that patent will be willful with treble damages). Especially in the software field, this causes all kinds of problems. As many people have pointed out, if you were to try and patent software that you create, you would have to file a patent for every few lines of code you write. With first-to-invent, I would expect (though I'm not a lawyer, and haven't studied this in depth, so I could very well be wrong) that you would be able to simply not bother patenting it, and then if sued, file a patent and use the first to invent rule to get your patent to override theirs.
    • tptacek 14y ago
      It does not mean that. The filer has to prove they invented the idea, which they can't do if you've published it prior to their filing. If you weren't going to publish or file a patent, nothing changes for you at all; you're exactly as exposed to patent litigation as you were prior to the change, because your inaction was no more effective at blunting bad patents under "first to invent". If you invent something and keep it a secret, other people have always been able to patent the same idea, because the law does not require people to read your mind. Again, I think the issue is that the "move" from "inventing" to "filing" conveys a kind of paperwork urgency that just isn't there.
• spc476 14y ago
  I would think that a second patent application would invalidate an existing patent application, as that proves the invention in question isn't novel enough (two or more people skilled in the arts came up with the same idea).
  • ComputerGuru 14y ago
    How does that work? I submit a patent, my neighbor copies my work and submits a patent, mine is automatically invalidated?
  • monochromatic 14y ago
    You would think that based on what? Nothing?
    • spc476 14y ago
      Well, the theory behind a patent is an invention that is not obvious to one skilled in the art. As an example, if Alice designed an improved engine and is the only one to patent the design, it wasn't obvious to other practitioners of the art of engine design. But if Alice and Bob both submit patents for the same engine design, and Alice and Bob are independent of each other, then the design wasn't that unique. I don't know ... it was just a thought.
      • tzs 14y ago
        > Well, the theory behind a patent is an invention that is not obvious to one skilled in the art. The requirement is that it not be obvious to one having ordinary skill in the art.
• wissler 14y ago
  It's interesting how many HN'ers think it's just fine that the actual first inventor gets screwed for not using the patent system.
  • jacques_chester 14y ago
    First to file doesn't change prior art. It's easy to imagine lots of horrid scenarios. In practice these are rare. What's more common, and much more expensive, is patent "interference" cases. The US patent system has imposed de facto bookkeeping requirements on inventors anyway. It's just that instead of being called a "patent", it's called "inventor's logbooks". There's an analogy here between common law title and Torrens title systems. Yes, Torrens has stunning failure modes. But they are rare and easily repaired compared to having to hope somebody, somewhere, doesn't have a scrap of paper you didn't know about. (IANAL, TINLA)
  • tzs 14y ago
    First to invent can screw the first inventor too, because the very notion of "first inventor" is kind of fuzzy. Suppose this is the time sequence: I come up with an idea. You come up with the same idea. We separately work on implementing the idea. We encounter serious problems with making it work. You solve the problems and actually get the thing to work. I solve the problems and actually get the thing to work. Which of us is the "actual first inventor"? I had the idea first. You solved the practical problems necessary to actually make it work first. In the US under first to invent the way it works basically is that your invention date is the earliest date such that you were working on the invention on that date and you worked diligently on the invention from that date through filing the patent. So, in my earlier example, if you and I both worked diligently from the time we conceived the idea to the time we solved the problems in making the thing work and both filed patents, I would win. However, if the timeline was this: I come up with an idea. You come up with the same idea. We separately work on implementing the idea. We encounter serious problems with making it work. I take a few months off to work on unrelated things. I resume work on the invention. You solve the problems and actually get the thing to work. I solve the problems and actually get the thing to work. You would have priority under first to invent now. Since you were working diligently from you date of conception, that is still your invention date. My invention date would now be the date I resumed working on the invention after my break.
• c3d 14y ago
  I wonder if this will put smaller companies at a disadvantage. They have less resources and can't afford to rush to the patent office every other day, whereas larger companies have staff doing just that.
• Daniel_Newby 14y ago
  How is this constitutional? The IP clause of the U.S. Constitution gives patents to the "inventor", not to a person who jumps through bureaucratic hoops.
  • tzs 14y ago
    The patent still goes to an inventor under first to file. All that changes is how priority is determined when independent inventors are vying for the patent on the same invention.
    • Daniel_Newby 14y ago
      The sense of "inventor" usually used is the first person, not the subsequent duplicators.
      • jeltz 14y ago
        A duplicator cannot get the patent. This is for genuine parallel inventions since you still need to prove you invented it.
  • gamblor956 14y ago
    Text of the Copyright Clause: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The first-to-file system merely states that the first inventor to file, out of a group of multiple simultaneous independent inventors, gets the patent. So, for example: you have Inventor X and Paperpusher Y. X invents but delays filing for a patent. Y comes across X's invention, realizes it has not been patentend, and files the patent application immediately. Y cannot and will not ever get the patent, because Y cannot prove invention. If Y were to steal X's notes and other junk and try to use those to "prove" invention, Y would be committing fraud and would be subject to civil and criminal liabilities, including jailtime. X may still have the opportunity to file for the patent application, but it depends on whether other parties (i.e., Z) have independently made the same discovery during the period X did not file.
• chmike 14y ago
  The first to file was already the rule, at least in France, and in Europe too I guess. The US just closed a loop hole. An inventor hiding it's invention could invalidate a patent of a third party who may have invested to use it for business purpose. In France, a prior inventor, who of course didn't disclose his invention otherwise it invalidates the patent, has still the right to freely use the invention without having to pay a license. But he can't license it and I think also make business out of it. A really unfair difference between US and Europe's Patent rules is that in Europe the Patent protection starts at the time of deposit, thus prior it's valdation. In the US it starts when the patent is validated. Thus the time between deposit and validation is an implicit patent lifetime extension which can be as long as 10 years for some patents ! Such long delays exist because it is in the interest of the inventor to delay the validation as much as possible. The pending patent also allows to license a potentially invalid patent or dissuade competitors to invest in the field because the pending patent is like a time bomb. This is a really bad rule of the US patent system.
  • scromar 14y ago
    This may have been true many years ago, but today the term of a patent in the US is (with some exceptions) 20 years from filing. (See, http://www.uspto.gov/web/offices/pac/mpep/s2701.html http://www.uspto.gov/web/offices/pac/mpep/s2701.html)
• bane 14y ago
  Yes, let's reward those who can navigate the bureaucracy better than those who can innovate, that'll definitely spur those garage tinkerers vs. corporate lawyers on permanent retainer.
• josaka 14y ago
  'first to file' is not quite right; it's 'first inventor to file.' You can show an earlier filing was derived from your disclosure and, thus, was not by an inventor. See http://www.aiarulemaking.com/rulemaking-topics/group-3/derivation-proceedings.php http://www.aiarulemaking.com/rulemaking-topics/group-3/deriv.... The distinction is noteworthy, in part, because most of the world is in a true 'first to invent' regime.
• jimfl 14y ago
  This dynamic seems to give an advantage to corporations who have a systematic, always-full pipeline of patent applications. The barrier to entry for a single inventor for filing a patent is pretty large.
  • scromar 14y ago
    This is probably true, but remember that the single inventor has the option of publishing the invention rather than filing a patent application. The publication will then become prior art to any later filed patent application by another. The inventor may then file for a patent on the invention within a year of publication, but may have to overcome significant prior art that has arisen in intervening time (i.e., between publication and filing). For a number of reasons (that I'm not going into here) this may not be the best strategy in most, or possibly any, situations, but it does exist.