
March 16, USPTO switches from 'first to invent' to 'first to file' - seats
http://www.jdsupra.com/legalnews/top-ten-reasons-to-file-your-patent-appl-98912/
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tptacek
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.

~~~
lambda
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
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.

~~~
DannyBee
"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."

This is not right. Prior to AIA it was possible to invalidate a patent by
showing secret invention by another inventor prior to the patent invention
date, among other things.

See also: Metallizing Eng. v. Kenyon (secret commercial use by party) or
Eggbert v. Lippman (secret use in public) or Gore v. Garlock (Secret use by
third party).

In fact, there is a bunch of "secret prior art" that AIA eliminates.

~~~
tptacek
Whoah. How did that work?

Also: from having been through the patent process a bunch of times: does this
make it "harder" to obtain a patent by eliminating the ability to sell the
invention under NDA before filing? I remember this being part of the M.O. of
building, selling, and then patenting technology at companies I've worked at.

~~~
DannyBee
There were a variety of forms of secret art (in the sense that the inventor
could not possibly have known about them when they filed for the patent), they
were only brought up in re-exams or trials, of course.

There are also some sad cases where out-of-order patent processing caused
later filed patents issued more than a year before earlier filed pending app.
You don't get interference proceedings if the later-filed patent issued more
than a year before your pending app. You just get a huge mess instead ;)

To answer the other question, since AIA makes secret commercialization _not
prior art_ , I expect more people will sell stuff under NDA[1]. Hopefully,
more people will publish too.

[1] The statute itself is a bit ambiguous, but the PTO's new guidelines say
"The legislative history of the AIA indicates that the inclusion of this
clause in AIA 35 U.S.C. 102(a)(1) should be viewed as indicating that AIA 35
U.S.C. 102(a)(1) does not cover non-public uses or nonpublic offers for sale "

~~~
riemannzeta
Your analysis seems not quite right. Metallizing, for example, is a public use
case in the sense that the legislative history uses the term even though the
public could not have understood how to make the invention from the public
use. I think the legislative history here is meant to say that the clause is
meant to have the same scope as the old 102(b) bars except for territoriality.
There's stil the new clause though...

~~~
DannyBee
Yes, i agree with your viewpoint of what Metallizing is about, though
Metallizing is still generally considered a secret prior art case, in the way
"secret prior art" is used: Things the inventor could not have possibly known
about at the time of filing, even if they had attempted to know everything.

In that sense, it is in fact, a secret use, even though the holding was that
it was a public use :)

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ComputerGuru
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
> 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. ;)

~~~
ComputerGuru
Let me share with you my scenario: I have spent 5 years and a considerable
amount of my yearly income developing a product I think can honestly
revolutionize the electronic braille reader industry for the blind. This is a
multi-billion a year industry that has stagnated and seen no innovation or
development in 30 years. It is in dire need of disruption, and there are
hundreds of millions of people around the globe that can benefit from new
technology here.

I am a "lone wolf" garage-based inventor. If there was no such thing as patent
protection, by the time I went from zero to manufacturing and product
availability, any of the current big names in the market could take my tech
and bring it to market with their existing connections and heavy market
presence and there would be a) nothing I could do about it and b) no incentive
for me to innovate and come at a solution in such market space at such a heavy
cost to myself.

Patents actually work really well for this sort of thing. I'd be interested to
here in alternatives you think could work, that don't rely on keeping the idea
secret to the last second and securing millions to billions in angel/vc
capital.

~~~
MichaelGG
This assumes that without patents no one else would invent this tech, that you
wouldn't approach companies with rough outlines and sell the designs for a
one-time payment, that you wouldn't work for such a company and invent the
technology during your employment, etc.

Without patents, if the tech is invented, it gets distributed
quicker/faster/cheaper - that's a benefit to society, even though it's not
nice for you.

So the real question is: Are there enough folks like you actually bringing
real inventions that need patents as an incentive to outweigh the damage done
by the patent system? I don't know, but it seems like cases like yours are not
so common. I've only read anti-patent studies, so I lack information to know
if cases like yours are actually providing a net positive.

~~~
leoedin
You skimmed over the key point a bit. "If" tech is invented, it gets
distributed faster/quicker/cheaper without patents.

If. What incentive does anyone have, large or small, to put large quantities
of money into R&D work if it will give them next to no market advantage? The
overlap between companies good at innovation and companies good at mass
manufacturing is surprisingly small - large companies, which completely
dominate manufacturing, are absolutely terrible at innovation.

A huge amount of early innovation is done by small firms and universities,
which then license that technology to larger companies to produce. Modern
technology developments are too complex to be done by a man in a garage. It
takes teams of people years to develop better engines, better batteries,
better industrial processes. If the financial support for that work is removed
(which it would be without patents), it would stop.

A functioning engine or machine could be copied in weeks by a large team of
engineers. What isn't seen is the years and years of iteration and lessons
learned from the development of that machine. If a world without patents is
not of benefit to the person creating these machines, why would they bother?

Software is a very different case to physical technology. The investment
required in software is almost all labour (and so can be bootstrapped). The
functionality can be provided seperate to the source code, making complete
copying hard.

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chmike
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
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>)

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c3d
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.

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hayksaakian
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
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.)

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adamnemecek
Call me the village idiot but is this good or bad?

~~~
Daniel_Newby
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.

~~~
detst
No. You should read the other comments before posting. DannyBee explains
above: "It's about what happens when two people file patent apps for things
they can _both prove they invented_." If I steal your invention and patent it,
you still have the opportunity to show that it was your stolen idea.

~~~
Daniel_Newby
Civil lawsuits use a balance of probabilities standard. If the IP theft was
well conducted, and the patent holder forged a careful back story, then the
true inventor loses almost automatically.

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icebraining
Remember that everyone except the US has been first-to-file for a long time.
Can you provide evidence of this being a problem somewhere else?

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spc476
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).

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monochromatic
You would think that based on what? Nothing?

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spc476
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
> 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.

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josaka
'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/deriv...](http://www.aiarulemaking.com/rulemaking-
topics/group-3/derivation-proceedings.php). The distinction is noteworthy, in
part, because most of the world is in a true 'first to invent' regime.

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jimfl
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
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.

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randall
Is this really true? Seems wrong... can someone weigh in?

Edit:
[http://en.wikipedia.org/wiki/First_to_file_and_first_to_inve...](http://en.wikipedia.org/wiki/First_to_file_and_first_to_invent)

~~~
yaddayadda
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_...](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) (there may be newer versions, but this version
has been up since you made your comment)

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bane
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.

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wissler
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.

~~~
tzs
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.

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Daniel_Newby
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
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
The sense of "inventor" usually used is the first person, not the subsequent
duplicators.

~~~
jeltz
A duplicator cannot get the patent. This is for genuine parallel inventions
since you still need to prove you invented it.

