Patent Office Seeking Comments On How To Implement A 'First To File' Regime Instead Of 'First To Invent'

from the help-them-not-muck-it-up dept

Tue, Jul 31st 2012 10:58pm — Mike Masnick

You may remember that last fall, there was an incredibly weak attempt at patent reform known as the America Invents Act. This was the result of a nearly seven-year-long fight over patent reform, with nearly every good idea from early proposals being watered down to completely useless, and a few bad ideas ramped up for good measure. Nothing in the AIA actually dealt with the problems of patent trolls or patent thickets. One of the ideas that survived the years-long culling was flipping the US patent system from a "first to invent" system to a "first to file" system. I've long argued that this is a very bad idea for a variety of reasons. First, it encourages inventors to file for lots of patents as early as possible to beat anyone else to the Patent Office, rather than making sure that the invention is actually worth patenting. It also seems to go against the basic principle of the patent system, if it's supposed to reward actual inventors. Finally, switching to a first to file certainly seems likely to favor large companies with big legal staffs that can focus on rushing out as many patent applications as possible. Smaller entities might be in trouble.

To be fair, the arguments in favor of this switch are basically (1) everyone else does it (mostly true) and (2) proving who was first to invent is a total pain in the ass and can be slow and costly. Thus switching to a first to file system could save a lot of wasted time and money in the cases where there's a dispute. That may be true, but I'm not convinced it's a good reason.

That said, it doesn't much matter what I think: it made it into the bill and is now the law. The US Patent Office is now seeking comment on how it should go about implementing this new rule. It's put out two requests. First, it wants to know how it should change the examination guidelines for patent examiners (pdf and embedded below) to take this new rule into account. Second, it wants comments on how it should amend the "rules of practice," regarding this change -- since the current rules are based on the old "first to invent" system.

For those thinking of participating, this is not the place to argue why "first to file" is a bad system (or even why the patent system is broken). I imagine any such filings will be (correctly) deemed off-topic and discarded. However for those patent holders and patent lawyers (and scholars) for whom this change is a big deal, now might be the time to share some thoughts with the USPTO for how it can implement this change with as little damage as possible.

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Filed Under: comments, first to file, first to invent, patents, uspto

38 Comments

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saulgoode (profile), 31 Jul 2012 @ 11:37pm

The idiom "rearranging deck chairs on the Titanic" comes immediately to mind.
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- Anonymous Coward, 1 Aug 2012 @ 2:29am
  
  Re:
  It's why I can't figure out why Mike is worried about "breaking" anything. He hates patents, why care if they are just moving the pieces around and keeping them all?
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  - The eejit (profile), 1 Aug 2012 @ 3:03am
    
    Re: Re:
    Because "first to file" ancourages gaming the current system on an industrial scale, regardless of actual production of content.
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    - Anonymous Coward, 1 Aug 2012 @ 5:05am
      
      Re: Re: Re:
      If I understand Mike correctly, the system is already gamed, and useless. Why participate in supporting patents all of a sudden? Why not just say "it's stupid, push them to abolish"?
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      - Anonymous Coward, 1 Aug 2012 @ 6:53am
        
        Re: Re: Re: Re:
        I hate you, I don't push for abolishing you from the face of the earth.
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      - Anonymous Coward, 1 Aug 2012 @ 7:35am
        
        Re: Re: Re: Re:
        You really are an idiot. Pushing against a worse patent system is not the same as favoring patents.
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  - Anonymous Coward, 1 Aug 2012 @ 4:43am
    
    Re: Re:
    It's why I can't figure out why Mike is worried about "breaking" anything. He hates patents, why care if they are just moving the pieces around and keeping them all?
    
    He's going to whine about the patent no matter what. We all know that. Of course, the change to first to file isn't really a big deal as there were very, very few interferences to begin with. But yeah, he can milk this for all its yellow journalism/FUD spreading worth. What a joke.
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    - abc gum, 1 Aug 2012 @ 5:10am
      
      Re: Re: Re:
      Of course there are no studies or articles which discuss the two methods that one might reference in support of claims that the change is no big deal ... so why provide any.
      
      If a million monkeys were filing a million patents for a million years would they eventually patent everything that could possibly be patented? This would certainly bolster the patent office budget and would create many jobs in the field of law, however the benefit to society is questionable at best and would be very bad for the economy.
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    - Anonymous Coward, 1 Aug 2012 @ 7:41am
      
      Re: Re: Re:
      " the change to first to file isn't really a big deal as there were very, very few interferences to begin with."
      
      What do you mean by 'interferences'? How is the amount of public 'resistance' to a bill, especially if it's a bill with many ambiguously written provisions with little time for public scrutiny (because most of the bill was probably drafted behind closed doors and the bill was only openly available for a short period of time), an indication of how substantial a change was?
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      - Anonymous Coward, 1 Aug 2012 @ 7:43am
        
        Re: Re: Re: Re:
        (well, to be fair, the bill has been discussed on Techdirt for a while, but as has been mentioned, undesired last minute changes were made to make it much worse. It's a bait and switch con game, start with a bill that the public likes and change it up at the last minute to one that no one wants before the masses have a chance to coordinate a response).
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        Anonymous Coward, 1 Aug 2012 @ 7:44am
        
        Re: Re: Re: Re: Re:
        and pass it before the masses have a chance to coordinate a response *
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  - Pwdrskir (profile), 1 Aug 2012 @ 11:31am
    
    Work vs Leeching
    Mike is trying to save patents. He is pointing out that people who create AND are productive are being kicked to the curb for people who are not.
    
    Any dumbass can sit around and file some vaguely worded idea that some dumbass at the patent office will approve. To actually make ideas work is what takes the talent. There are hundreds of patents that exist only because they were filed first, they were not put into production AND work first.
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Shmerl, 31 Jul 2012 @ 11:43pm

Can anyone reform it again and reverse this idiotic "improvement"?
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- Anonymous Coward, 1 Aug 2012 @ 3:39am
  
  Re:
  In theory, yes. In practice, no: the corporations and their armies of lobbyists will ensure that no, it will not be reversed. America is showing signs, such as with the AIA and other IP maximalist garbage, that it is stagnating (which if anyone has read Foundation by Isaac Asimov, you'll know this is a very, very bad thing for the future of America).
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Jeff Rowberg (profile), 31 Jul 2012 @ 11:53pm

As someone who has suffered from a ridiculous IP litigation threat, I vote that they take the resources that will no longer need to be needed to determine which of the multiple filing parties was the first to invent and instead devote those resources to taking note of glaring prior art and obviousness, to immediately reject a much larger portion of patent applications.

That seems like it should be about as beneficial as anything else could be.
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- Miff (profile), 1 Aug 2012 @ 1:58am
  
  Re:
  Except there's no more prior art with first to file.
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  - Anonymous Coward, 1 Aug 2012 @ 3:36am
    
    Re: Re:
    In tech, there is always prior art. Someone coded a widget for personal use then uploaded it to a message board and said, "Anyone else find this useful?". A year later someone else took the idea, turned it into a full feature product, and filed a patent.
    
    Or some version of that.
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    - Miff (profile), 1 Aug 2012 @ 2:23pm
      
      Re: Re: Re:
      I know, but what I was saying is that prior art doesn't invalidate first to file patents, only first to invent.
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- Vic Kley, 1 Aug 2012 @ 12:56pm
  
  Re: Obviousness
  Obviousness is common response of those who judge in hindsight, but lack the ability or understanding to invent in the moment.
  
  Obviousness is already grossly overused by the USPTO. The worst is software here lazy examiners and inventors refuse to make truth tables or some standard form of logic so that vague descriptions do not get in the way of inventive contributions.
  
  the examiner without any pre-knowledge must be given the state of the field at the time of the invention and with that alone show obviousness.
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Anonymous Coward, 31 Jul 2012 @ 11:57pm

It is time to build a genealogy tree for "inventions" because now it is worth showing who patented something first and can invalidate new patents more easily.

I am always looking for the good in the bad.
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- ltlw0lf (profile), 1 Aug 2012 @ 8:59am
  
  Re:
  It is time to build a genealogy tree for "inventions" because now it is worth showing who patented something first and can invalidate new patents more easily.
  
  I believe James Burke already came up with something like that. He called it "Connections" and you can read more about it here.
  
  One thing I learned from watching Connections is that everything is built on top of those things before it, and another thing I learned is there is no shortage of assholes who thought they invented something first and thus claim that they are entitled to a portion of everyone 'elses profits for inventing it. I don't have a problem with people who actually invent something making some money from it...my problem is that the system only works for the few rich folks out there who actually didn't do any work, while the inventors it was meant to help are grounded into meat under the heel of those folks. Capitalism is about inventing a better mousetrap which the customer is happy to hand over cash for. Capitalism is not about suing your customer and your competitors because you fail at life.
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  - Niall (profile), 2 Aug 2012 @ 5:18am
    
    Re: Re:
    Ah, but that's what poorly regulated capitalism is all about. The trick is getting the right amount of the correct regulation - and humanity in the process.
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Alex Macfie (profile), 1 Aug 2012 @ 12:21am

First to File would make it easier to bust bad patents
First to File would make it easier to bust bad patents by setting the priority date of the patent to the date of filing, rather than the (earlier) putative date of invention. This would make it easier to bust bad patents with prior art.
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Jake, 1 Aug 2012 @ 1:05am

Anyone else think that maybe the question of how best to implement the new system should have been addressed before voting it into law?
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- Anonymous Coward, 1 Aug 2012 @ 1:25am
  
  Re:
  The legislators have to be seen "doing something" and so they pass the laws, tell the director -do this- then the director pushes it down the ranks to middle management, then the next layer of management, and so on until the implementors say "uhhh, well how?" Whereupon each layer of management shrugs their shoulders and passes it back up, and finally some genius says "lets ask the internet!"
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Anonymous Coward, 1 Aug 2012 @ 1:33am

So, if someone else invented it and then another entity files first, does no one get the patent due to prior art?
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- Alex Macfie (profile), 1 Aug 2012 @ 1:48am
  
  Re:
  If the real inventor made the invention public before the filer, then yes, that is what would happen.
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nospacesorspecialcharacters (profile), 1 Aug 2012 @ 2:13am

What a joke!
They may as well just setup a public facing ftp server and encourage everyone to bung every random passing thought they have onto it in a plain-text file.

Then they can just send invoices to the contact detailed in the text file and once the invoice is paid it's filed.

Why even bother with the pretense of looking for prior art or questioning the obviousness of the patent itself?
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Anonymous Coward, 1 Aug 2012 @ 2:45am

Proving anything in court is a total pain in the ass and can be slow and costly. Does that mean we should throw out courts too?
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Ninja (profile), 1 Aug 2012 @ 3:41am

I don't see these ppl talking about allowing a simultaneous and independent invention option. I also don't see them talking about obvious patents. The first post is right on spot, we are arguing about the flight service in a plane that's falling.
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PCCare247 Reviews, 1 Aug 2012 @ 4:55am

Filing first
Invention and then filing for it immediately in the court seems to be the best option.
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ejoftheweb, 1 Aug 2012 @ 6:48am

a third method
Since a patent is essentially a limited monopoly in exchange for publication of the invention, it should be neither first to file nor first to invent but *first to publish* (in a form readily understood by one skilled in the art).. These days, fairly easy to determine, competing services could offer signed proof of publication, would make patent searching easier and mechanisable. Statute and caselaw should provide that obfuscatory drafting of the spec would nullify a claim to priority, since publication is the aim.and if you've tried to hide the invention by not being clear about how it works you haven't published and shouldn't get priority.
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Tom Gallagher, 1 Aug 2012 @ 7:51am

First to file
This is all interesting but we are NOT switching to First to File. That is what separates the experts from the self-proclaimed pundits. Non-experts tend to ignore the stuff they don't understand. We are switching to "first inventor to file" which is dramatically different from "first to file".
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- Mike Masnick (profile), 1 Aug 2012 @ 9:44am
  
  Re: First to file
  This is all interesting but we are NOT switching to First to File. That is what separates the experts from the self-proclaimed pundits. Non-experts tend to ignore the stuff they don't understand. We are switching to "first inventor to file" which is dramatically different from "first to file".
  
  Actually, we've discussed that (contrary to your snide ad hom). We didn't ignore it. The fact is that the difference is miniscule for all realistic purposes.
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Digger, 1 Aug 2012 @ 12:18pm

Rich get richer and everyone else gets fucked!
First to file only serves the global mega-corps.

Fuck em all.
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Anonymous Coward, 1 Aug 2012 @ 1:52pm

Worst case scenario
Inventor invents something spectacular, large corporation sees it and patents it, denies inventors accusations of theft, and then files for, i dont know, defamation, inventor brushed aside with unaffordable lawsuits

Worst case scenario
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staff, 1 Aug 2012 @ 2:03pm

window dressing
"Patent Office Seeking Comments"

That's just window dressing. The PTO does everything it can to ignore inventors as did Congress when they passed the corrupt patent bill.
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Hellmark (profile), 1 Aug 2012 @ 3:00pm

More ways for trolls to profit
The thing with this whole first to file deal is that it should be fairly easy for patent trolls to start applying for random patents. With how loose the patent system is now, they probably could get patents on things that aren't even proven possible yet. Or hell, pay some grunt in a lab for what their betters are working on, patent it while they're still working out the finer details, and bam, sue 'em as soon as they bring it to market.
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