

Starting today, the US has a ‘first to file’ patent system - liotier
http://thenextweb.com/insider/2013/03/16/starting-today-the-us-has-a-first-to-file-patent-system-so-you-can-leave-that-prior-art-at-the-door

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rayiner
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.

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otterley
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.

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smoyer
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).

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azakai
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).

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eurleif
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.

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TimPC
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>

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.

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

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TimPC
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).

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barredo
Thanks. I didn't even consider most of those.

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robomartin
> 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.

