3 ms·

Starting today, the US has a ‘first to file’ patent system

16 points by liotier 14y ago

barredo 14y ago
How much does it costs to file a patent in the US?
- deleted 14y ago
  [deleted]
- TimPC 14y ago
  Filing is the inexpensive part. How much do you want reviewed by experts? Are you up-to-date on the latest approaches and case law in the subject? Should your invention be patent the software, or the software running on the hardware. Are your claims drafted against users, vendors, installers, competitors or some combination of the above? How well have you supported your claims? Have you made a range of claims of decreasing scope so that you end up with the broadest coverage you can get for your invention? All of these can be hard challenges best left to experts, and plenty of people have made big mistakes here like writing an important software patent that could only be enforced against customers (for a B2C product).
  - barredo 14y ago
    Thanks. I didn't even consider most of those.
smoyer 14y ago
This change doesn't eliminate prior art as it only applies to companies that haven't made a public disclosure. My understanding (and IANAL) is that if you make a public disclosure, you still have a "grace period" in which to file (and that your disclosure date has to come before the other company files). The real difference is that secret company documentation is no longer the determining factor if neither entity has publicly disclosed. I've kept rigorous engineering notebooks for almost thirty years so we could (if necessary) prove we were the first to invent. There are other benefits to the notebooks (and I'm too old and set in my ways to stop now).
eurleif 14y ago
First to file does not eliminate prior art. Prior art applies to inventions which were published publicly. First to invent applies to inventions which were not.
rayiner 14y ago
The title of the article is totally wrong. "First to file" does nothing about prior art. What it does is change the rule for when two patents are filed at the same time. Before, there was litigation to figure out who invented first. Now, the first one to file wins. Indeed, AIA expands the concept of "prior user rights." Basically, if you were using a patented technology first, you can't be held liable for infringement. It also expands the cases in which prior art can be used to defeat a patent application.
azakai 14y ago
IANAL, but the headline and article sound very different from everything else I've read about this. Prior art isn't going away. Even in "first to file", that is only if there isn't prior art. IOW if there is no prior art, the first to file wins. That makes sense because otherwise, proving who was actually first is terribly hard. But, if there is prior art, no one can patent it anymore (in theory).
TimPC 14y ago
Firstly IANAL, but my understanding is this relates to the ability to file for ownership of an invention rather than the existance of prior art for Novelty. A cursory examination of background shows that the act which standardizes the method of filing also expands the validity and scope of available prior art: http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act I also want to correct a misconception on the site, in most jurisdictions public disclosure invalidates patentability, one should check with a lawyer, review existing laws (at their own risk tolerance) or file a provisional before any public disclosure.
robomartin 14y ago
> in my view it seems quite fair that simply thinking up an idea and doing nothing with it doesn’t grant an individual unending rights to it. Surely coming from someone who never devoted any time whatsoever to solving a difficult problem. Not defending the US patent system. It's still a mess. This first to file rule will have one important effect: People and companies will not most-definitely patent ideas. Yeah, I know, ideas are not patentable. If you spent any time reading through patents (me, probably several hundred) you know with absolute certainty that a huge percentage of granted patents are ideas that never saw reduction to practice. The new setup means that I better file as soon as I think I have all to moving parts figured out because if I wait another year for the normal course of R&D some guy might beat me to it. So, I'll go ahead and file to get a patent on my idea. And I'll do so as soon as humanly possible. Reduction to practice? Prototypes? No time. File! File! File! Not sure this makes things better.
otterley 14y ago
This headline is both misleading and totally false. The author should have consulted a patent attorney before touching his keyboard. The new law does not change the basic requirements for a patent that the invention be novel, useful, and non-obvious. If prior art exists, the novelty requirement is not satisfied, and a patent either should not be issued, or should be deemed invalid in subsequent litigation. What the new law does do is -- assuming no prior art exists -- potentially change the effective date at which an invention was "born." Previously, two competing inventors trying to obtain a patent at around the same time would seek to prove to the USPTO when the invention was born based on evidence of their work (research notes, implementation notes, etc.). This leads to a lot of difficult work and judgment, and frequent litigation among two competing parties. Under the new law, however, the birthdate of an invention is when the patent application is filed. Simple as that. As for the prior art concern, I can imagine folks saying, "well, if the new date is the date of filing, what about that other inventor who actually invented it first?" Here's the thing: it doesn't matter. If the other inventor did, in fact, invent it first, and publicized it, both parties would be out of luck. The first inventor would be ineligible to receive a patent because he publicized his work before filing, and the second inventor would be ineligible to receive a patent because of the prior art.

16 points by liotier 14y ago

barredo 14y ago

How much does it costs to file a patent in the US?

deleted 14y ago
[deleted]
TimPC 14y ago
Filing is the inexpensive part. How much do you want reviewed by experts? Are you up-to-date on the latest approaches and case law in the subject? Should your invention be patent the software, or the software running on the hardware. Are your claims drafted against users, vendors, installers, competitors or some combination of the above? How well have you supported your claims? Have you made a range of claims of decreasing scope so that you end up with the broadest coverage you can get for your invention? All of these can be hard challenges best left to experts, and plenty of people have made big mistakes here like writing an important software patent that could only be enforced against customers (for a B2C product).
- barredo 14y ago
  Thanks. I didn't even consider most of those.

smoyer 14y ago

This change doesn't eliminate prior art as it only applies to companies that haven't made a public disclosure. My understanding (and IANAL) is that if you make a public disclosure, you still have a "grace period" in which to file (and that your disclosure date has to come before the other company files). The real difference is that secret company documentation is no longer the determining factor if neither entity has publicly disclosed. I've kept rigorous engineering notebooks for almost thirty years so we could (if necessary) prove we were the first to invent. There are other benefits to the notebooks (and I'm too old and set in my ways to stop now).

eurleif 14y ago

First to file does not eliminate prior art. Prior art applies to inventions which were published publicly. First to invent applies to inventions which were not.

rayiner 14y ago

The title of the article is totally wrong. "First to file" does nothing about prior art. What it does is change the rule for when two patents are filed at the same time. Before, there was litigation to figure out who invented first. Now, the first one to file wins. Indeed, AIA expands the concept of "prior user rights." Basically, if you were using a patented technology first, you can't be held liable for infringement. It also expands the cases in which prior art can be used to defeat a patent application.

azakai 14y ago

IANAL, but the headline and article sound very different from everything else I've read about this. Prior art isn't going away. Even in "first to file", that is only if there isn't prior art. IOW if there is no prior art, the first to file wins. That makes sense because otherwise, proving who was actually first is terribly hard. But, if there is prior art, no one can patent it anymore (in theory).

TimPC 14y ago

Firstly IANAL, but my understanding is this relates to the ability to file for ownership of an invention rather than the existance of prior art for Novelty. A cursory examination of background shows that the act which standardizes the method of filing also expands the validity and scope of available prior art: http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act I also want to correct a misconception on the site, in most jurisdictions public disclosure invalidates patentability, one should check with a lawyer, review existing laws (at their own risk tolerance) or file a provisional before any public disclosure.

robomartin 14y ago

> in my view it seems quite fair that simply thinking up an idea and doing nothing with it doesn’t grant an individual unending rights to it. Surely coming from someone who never devoted any time whatsoever to solving a difficult problem. Not defending the US patent system. It's still a mess. This first to file rule will have one important effect: People and companies will not most-definitely patent ideas. Yeah, I know, ideas are not patentable. If you spent any time reading through patents (me, probably several hundred) you know with absolute certainty that a huge percentage of granted patents are ideas that never saw reduction to practice. The new setup means that I better file as soon as I think I have all to moving parts figured out because if I wait another year for the normal course of R&D some guy might beat me to it. So, I'll go ahead and file to get a patent on my idea. And I'll do so as soon as humanly possible. Reduction to practice? Prototypes? No time. File! File! File! Not sure this makes things better.

otterley 14y ago

This headline is both misleading and totally false. The author should have consulted a patent attorney before touching his keyboard. The new law does not change the basic requirements for a patent that the invention be novel, useful, and non-obvious. If prior art exists, the novelty requirement is not satisfied, and a patent either should not be issued, or should be deemed invalid in subsequent litigation. What the new law does do is -- assuming no prior art exists -- potentially change the effective date at which an invention was "born." Previously, two competing inventors trying to obtain a patent at around the same time would seek to prove to the USPTO when the invention was born based on evidence of their work (research notes, implementation notes, etc.). This leads to a lot of difficult work and judgment, and frequent litigation among two competing parties. Under the new law, however, the birthdate of an invention is when the patent application is filed. Simple as that. As for the prior art concern, I can imagine folks saying, "well, if the new date is the date of filing, what about that other inventor who actually invented it first?" Here's the thing: it doesn't matter. If the other inventor did, in fact, invent it first, and publicized it, both parties would be out of luck. The first inventor would be ineligible to receive a patent because he publicized his work before filing, and the second inventor would be ineligible to receive a patent because of the prior art.