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How the America Invents Act Will Change Patenting Forever

26 points by sk2code 14y ago

deleted 14y ago
[deleted]
oneandoneis2 14y ago
So.. it's a change from "The patent is yours.. unless somebody comes along with a convincing story about how they thought of it before you and just didn't tell anyone" to "The patent is yours" I don't understand the negative slant this article is trying to put on it. Other than the same kind of knee-jerk "Change is bad!" that you see every time Facebook changes its page layout, what's the problem with this?
- banachtarski 14y ago
  The problem is that there are cases where the original inventor really is the person without the resources or time to file the patent first. It goes both ways.
  - rayiner 14y ago
    The AIA expands the "prior user rights" defense. It only affects that original inventor if he subsequently tries to patent the invention, not if he just keeps using it.
  - nathan_long 14y ago
    That's true. However, if the little inventor doesn't file the patent, they either 1) sell the product anyway or 2) don't sell the product. If #1, they have prior art to keep a big company from patenting it, and the two compete in the market. If #2, I'd argue they don't deserve the patent; it doesn't benefit the public to grant them that monopoly unless the public gets a product out of it. Let the big company patent and sell it. Right?
    - banachtarski 14y ago
      In the case of #1, how does the inventor keep selling once corporation X successfully files? For #2, the inventor may have patented in the hopes of licensing the idea to a corporation with more manufacturing muscle.
- TheCoelacanth 14y ago
  I think a lot of the backlash comes from a misunderstanding of how this affects prior art. The name "first-to-file" makes it seem like you can take some invention that has been published but not patented, and patent it, preventing the actual inventor from using the invention. That is not the case. Only the inventor is allowed to file a patent. Under a first-to-file system, anything that has been made public can still be used as prior art to invalidate a patent.
  - gamblor956 14y ago
    Anything...except the inventor's own prior disclosures about the invention made within a period of time immediately prior to the patent application (I think up to a year before the patent filing but I'm not sure.)
    - Gormo 14y ago
      So what happens if the inventor decides to publish the invention in a manner that implies that it's free for others to use without any license or royalty, but then, a year later, decides to file for a patent? Would the use of the invention by others invalidate the patent application? Would the patent be granted, but unenforceable due to the prior public release of the invention being construed as estoppel that creates a general license to the invention? Or would the inventor, armed with a new patent, be able to tell everyone already using the invention that they now have to pay a license fee to continue using it?
ChrisNorstrom 14y ago
Does anyone know how or weather prior art will be affected?
- andylei 14y ago
  it won't be
saosebastiao 14y ago
So what happens when someone patents your company's established trade secrets and then wants to charge your company to use its own internally developed technology?
- andylei 14y ago
  prior art is still a defense, just like it was before.
  - SEMW 14y ago
    "Prior art" is only stuff that was at the time available to the public, so wouldn't apply to internal company secrets. The relevant defence here is prior use, which is different: unlike prior art, it doesn't invalidate the patent, it's just a defence to infringement. An example of a prior use defence in a first to file jurisdiction -- here, the UK -- is: "Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention— (a) does in good faith an act which would constitute an infringement of the patent if it were in force, or (b) makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act."
tptacek 14y ago
Previous thread, which includes comments from a patent lawyer. https://news.ycombinator.com/item?id=5211221 https://news.ycombinator.com/item?id=5211221 Long story short: this change is not a big deal. Especially useful comment: https://news.ycombinator.com/item?id=5212111 https://news.ycombinator.com/item?id=5212111
- nh 14y ago
  It seems that media just read the title of the bill and ran with it. Explain it to me as a 5 year old: This is not a true 'first to file'. You basically get 1 year grace period. Example: John gives a speech on his invention. Mark files a patent a month later after hearing John's speech. John then files a patent application 6 months later. Mark's application cannot be used against John's application as prior art,even though, Mark filed a application first. This was generally the practice before AIA. As most people would say it harmonizes US patent laws with around the world. In other words, mostly semantics...
EGreg 14y ago
Does this mean that some entrepreneur can invent something, start building in stealth mode, and one of his employees can patent it, quit and sue him in a year? :P

26 points by sk2code 14y ago

deleted 14y ago

[deleted]

So.. it's a change from "The patent is yours.. unless somebody comes along with a convincing story about how they thought of it before you and just didn't tell anyone" to "The patent is yours" I don't understand the negative slant this article is trying to put on it. Other than the same kind of knee-jerk "Change is bad!" that you see every time Facebook changes its page layout, what's the problem with this?

banachtarski 14y ago
The problem is that there are cases where the original inventor really is the person without the resources or time to file the patent first. It goes both ways.
- rayiner 14y ago
  The AIA expands the "prior user rights" defense. It only affects that original inventor if he subsequently tries to patent the invention, not if he just keeps using it.
- nathan_long 14y ago
  That's true. However, if the little inventor doesn't file the patent, they either 1) sell the product anyway or 2) don't sell the product. If #1, they have prior art to keep a big company from patenting it, and the two compete in the market. If #2, I'd argue they don't deserve the patent; it doesn't benefit the public to grant them that monopoly unless the public gets a product out of it. Let the big company patent and sell it. Right?
  - banachtarski 14y ago
    In the case of #1, how does the inventor keep selling once corporation X successfully files? For #2, the inventor may have patented in the hopes of licensing the idea to a corporation with more manufacturing muscle.
TheCoelacanth 14y ago
I think a lot of the backlash comes from a misunderstanding of how this affects prior art. The name "first-to-file" makes it seem like you can take some invention that has been published but not patented, and patent it, preventing the actual inventor from using the invention. That is not the case. Only the inventor is allowed to file a patent. Under a first-to-file system, anything that has been made public can still be used as prior art to invalidate a patent.
- gamblor956 14y ago
  Anything...except the inventor's own prior disclosures about the invention made within a period of time immediately prior to the patent application (I think up to a year before the patent filing but I'm not sure.)
  - Gormo 14y ago
    So what happens if the inventor decides to publish the invention in a manner that implies that it's free for others to use without any license or royalty, but then, a year later, decides to file for a patent? Would the use of the invention by others invalidate the patent application? Would the patent be granted, but unenforceable due to the prior public release of the invention being construed as estoppel that creates a general license to the invention? Or would the inventor, armed with a new patent, be able to tell everyone already using the invention that they now have to pay a license fee to continue using it?

ChrisNorstrom 14y ago

Does anyone know how or weather prior art will be affected?

andylei 14y ago
it won't be

saosebastiao 14y ago

So what happens when someone patents your company's established trade secrets and then wants to charge your company to use its own internally developed technology?

andylei 14y ago
prior art is still a defense, just like it was before.
- SEMW 14y ago
  "Prior art" is only stuff that was at the time available to the public, so wouldn't apply to internal company secrets. The relevant defence here is prior use, which is different: unlike prior art, it doesn't invalidate the patent, it's just a defence to infringement. An example of a prior use defence in a first to file jurisdiction -- here, the UK -- is: "Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention— (a) does in good faith an act which would constitute an infringement of the patent if it were in force, or (b) makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act."

tptacek 14y ago

Previous thread, which includes comments from a patent lawyer. https://news.ycombinator.com/item?id=5211221 https://news.ycombinator.com/item?id=5211221 Long story short: this change is not a big deal. Especially useful comment: https://news.ycombinator.com/item?id=5212111 https://news.ycombinator.com/item?id=5212111

nh 14y ago
It seems that media just read the title of the bill and ran with it. Explain it to me as a 5 year old: This is not a true 'first to file'. You basically get 1 year grace period. Example: John gives a speech on his invention. Mark files a patent a month later after hearing John's speech. John then files a patent application 6 months later. Mark's application cannot be used against John's application as prior art,even though, Mark filed a application first. This was generally the practice before AIA. As most people would say it harmonizes US patent laws with around the world. In other words, mostly semantics...

EGreg 14y ago

Does this mean that some entrepreneur can invent something, start building in stealth mode, and one of his employees can patent it, quit and sue him in a year? :P