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.
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.
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.
"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.
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.
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
"
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...
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 :)
The unstated assumption here is that the patent office actually does the work to see whether anything related was published prior to granting the patent.
It's patents, so the terminology has to be confusing!
The "First to" is speaking about what happens in an interference proceeding between two patent applicants. What counts as prior art is largely unchanged— it's arguably even strengthened a bit (as a dishonest player could previously get away with more backdating of his lab notebooks).
Third party— that is, not derived from the applicant's work— public practice (which is pretty broad, including publication and use in a product available to the public) is an absolute bar to patentablity. After one year the "not derived" part goes away and even the applicants own publication (and work derived from it) constitute prior art.
(this was all also the case before, though the details a somewhat subtly different)
To quote the statute:
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
[...]
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
One of my concerns is that it gives the upper hand to large organization with the resources (including perhaps labor costs fixed to a certain degree by virtue of staff attorneys; also, filing fees) to file early and often.
Further entrenchment of IP as the purview of those who can afford it.
I'm glad to be proven wrong -- I'm not well-informed on this. But I fear it, both from my own limited thought exercise, and out of concern for the types of legal changes that are able to make it through the Federal process, these days, generally speaking.
I'm chucking because you just used "simply" and "unpatentability" in the same sentence. Maybe you can argue your point in a probabilistic sense, but I don't see how you can do so based on the underlying principles. Parallel inventions can certainly still be novel, useful, and non-obvious.
What if we think bigger and better? I can envision a more perfect patent system protecting two (or N) parties who independently invented the same thing. After all, a key justification for patents is to make the up-front R&D cost worthwhile. In the case of parallel invention, it seems more fair to the parties and the public interest to not force N valid inventions to result in either zero or one patents.
It should be a matter of definition. Since software patents don't deserve to exist altogether, making two parallel invention unpatentable would be only weaker, but still some positive development. I'd argue that this logic should apply across all patent field, not just for software, but for software the benefits are the most apparent.
Although it triggers a frothing at the mouth sort of anger that it's now a race to file first, a more careful reading of it suggests that your patent should be denied if any evidence of your invention occurs before you file for it.
That is, one-click shopping cart type patents would be automatically invalid if any such thing already existed or this sort of mechanism was published or discussed by another party. Is this correct?
Hasn't that always been the case? That's why when people start asserting bad patents, the Internet lights up with quests to find prior art to invalidate the patent.
I think another important point is that it removes a lot of potentially expensive litigation and discovery on who was actually the "first to invent" from a patent case.
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).
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.
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.
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.
> If there was no such thing as patent protection [...] 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
If they do it despite patent protection, do you believe you would have the time and resources to sue them, and that you would actually win? I imagine those companies would have more time to dedicate to a lawsuit, better knowledge of the patent system, and that they could afford to lose more money than you... This is an honest question, I see patents used by big company A to sue big company B but I have no idea if the US patent system actually manages to protect the interests of "lone wolf" inventors like you in this kind of setting.
> ...any of the current big names in the market could take my tech and bring it to market...
They could. They probably won't. They've got their own projects in the pipeline, they probably won't be as fast as you think (the first Android phone came a full year after the first iPhone), if they're behemoths then they're probably pretty risk-adverse anyway, and typically actually revolutionary ideas are sneered at by the establishment. (A very specific one that comes to mind: Paul Baran's packet-switching network idea was mocked: http://en.wikipedia.org/wiki/Paul_Baran#Selling_the_idea ) Stop worrying so much about imaginary competitors!
Or as Jessica Livingston wrote in the introduction to Founders at Work: "People like the idea of innovation in the abstract, but when you present them with any specific innovation, they tend to reject it because it doesn't fit with what they already know.
"Innovations seem inevitable in retrospect, but at the time it's an uphill battle. It's curious to think that the technology we take for granted now, like web-based email, was once dismissed as unpromising. As Howard Aiken said, "Don't worry about people stealing your ideas. If your ideas are any good, you'll have to ram them down people's throats.""
That depends upon the idea. If the innovation doesn't cannibalize their existing business, doesn't require some sort of paradigm shift that people are uncomfortable with and it offers benefits that are simple enough to understand then it will probably get copied instantly.
I believe his idea may fit this mold.
If an idea doesn't fit into this mold, then yeah, maybe he will have to shove it down people's throats. That still doesn't mean that he won't be beaten up by the industry behemoths' size and market distribution once they cotton on.
None of this means that patents will protect him, of course. Plus, he may get bludgeoned by the behemoths' patent portfolios as well as their market dominance.
But what is your plan for when a bunch of trivial parts of your invention are already patented by trolls as things like "method and apparatus for suppling power to a device"?
I don't think you are wrong, I just cannot see a proper solution either way.
People who dislike patents can still want the state to help "lone wolf" garage-based inventors.
Patents are a state enforced monopoly given to the invetor in exchange for information disclosure. Now that's all nice and all, but I for one would like that the state worked on proportionality when giving out aid. Is 20 years needed for you? whats your cost analysis? whats your business model? Do you expect you will need 20 years until your invention pays for the invested time and money? Would 18 years work? or say 12? maybe even 5 years would be enough? This are questions I think the patent officer should ask before giving out state enforced monopolies for 20 years.
To answer your question of alternatives to patents. Have you looked into foundations that gives out money to people working on inventions for blind people?
If not and the state is really the only entity that can give you enough to support the inventing process, then for everyone sake, please write your patent application in such a way that it actually do count as information disclosure.
... 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.
Yesterday I had run into a discussion about blind programmers, and what technology they use. Rather than using TTS I think I would (were I blind, I'm not) use a braille terminal instead. Out of curiosity (or perhaps procrastination), I starting looking around at those, and they didn't seem much advanced, and very expensive.
I was thinking that instead of having the the braille "display" below the keyboard, I'd really rather have a small wireless version that I can pop in my mouth and read with my tongue. That way I could still touch-type on a regular keyboard. I think that would make me much more productive than constantly having to move my hands back and forth. Maybe use Bluetooth with Serial Port Profile, and then it would be easy to connect it to phones and PCs.
no way man. i don't like how patents are applied to the specific cases i care about, and coming up with nuanced, balanced solutions requires way too much thinking. i say we ban all patents.
Being against all patents is an extreme position. Imagine investing 10 years and Hundreds of millions of dollars into making a brand new revolutionary motor for train propulsion. And having it ripped off within the first year of commercially using it because it wasn't patented.
The point of patents (at least in the US) is to benefit society. The question is if granting a monopoly on ideas is actually benefiting society. Thomas Jefferson wrote:
"That ideas should freely spread from one to another over the globe ... seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, ... incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property."[1]
He then goes on to point out that patents "may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody".
Given the abuse of the patent system and little evidence of it benefiting society, it's hardly an "extreme position" to be against patents.
I think the problem is that "idea" is such a broad spectrum. The "idea" of 1 click purchasing being patented -that's not helping anyone. The "idea" of a specific valve design which gives a 5% boost in efficiency? Something like that might have taken 10 years to figure out, but if it has no patent protection it can (and will) be copied by competitors the moment they can get their hands on your first machine.
Thomas Jefferson lived in a very different time to us. The investment in time and resources required to develop incremental modern technology is so vastly greater than it was then that his words are almost moot.
One weakness I see in arguments based on the amount of time required to discover something is that they don't take into account the possibility that lone inventor A used a painstaking brute force search to come up with a solution to a problem, when independent researcher B could have solved the problem in five minutes by applying known theory.
"If Edison had a needle to find in a haystack, he would proceed at once with the diligence of the bee to examine straw after straw until he found the object of his search. ... I was a sorry witness of such doings, knowing that a little theory and calculation would have saved him ninety per cent of his labor." - Nikola Tesla
There are times when that applies and times when it definitely doesn't. It's almost impossible to construct a legal system which recognises that. I'm not sure if quoting people who lived over a century ago is useful when discussing modern patent needs though. In the time since then we've established a much more defined engineering process informed by scientific research. Inventors typically aren't dabbling in new fields, but have spent years understanding the background of the field in which they work.
There are many industrial processes, mechanical and electrical designs and drugs which would have been almost impossible to arrive at without extensive testing and trial and error. It's worth noting that hindsight is key. It's easy to look back at almost any patent and say "it's obvious that that nozzle design or molecule works like it does, because it fits these theories.
Fundamentally, legal protection of innovation is required for investment. The current patent system is certainly flawed, but to argue for the complete abolition of it doesn't recognise the significant investment required to advance many technologies.
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.
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.
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 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.)
> The thing to remember is that first-to-file doesn't mean that if i file a patent app on something you invented, before you do, that I get a patent.
It's about what happens when two people file patent apps for things they can both prove they invented.
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.
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.
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.
Also, you're suggesting that if two criminal activities were well conducted, the inventor will lose a civil case? If this criminal activity is revealed, it invalidates the patent and subjects the executives and lawyers responsible to criminal sanctions and massive civil liabilities, including forfeiting all profits derived from the fraudulent patent and treble damages (i.e., 3x the actual damages the true inventor suffered). It's simply not ever worth the business risk to pursue this path.
That wouldn't be a problem if the original creator had published or patented the invention her/himself. Which is what the patent system is designed to encourage.
Suppose you come up with a jig for drilling holes in engine blocks. To you it is just a cost of doing business, like stocking the bathrooms with toilet paper. Your competitor can "invent" it fraudulently, file a patent, and blow your factory out of the water.
If you just want to protect yourself, just publish it somewhere. Prior art still exist with first-to-file, just not secret prior art. See Defensive publication[1], which isn't exactly a new concept, even in US patent history.
But then aren't you potentially giving away your competitive advantage?
Let's say I invent a new search engine, Poople. I don't have much money to patent it. But I can't keep the details secret either lest somebody else patent it. But by publishing the details defensively, my competitor with deep pockets, Paapo, goes and reimplements my algorithm and wipes me out of the marketplace.
You still have a year after publishing to file a patent. During that year, you only lose out on the patent if other innovations are made and published with regards to the subject matter of your patent and your application includes those other innovations. (You can still receive a patent if you restrict yourself to the invention described in your publication, but threading the needle in such a fashion could be difficult.)
Commercial sales by competitors are not subject to patent during that interim period, and they can continue such sales after the patent application is filed, but once the patent application is filed they can only continue to sell without a license the exact same products they sold before the application. So if the competitor changes the product sold, they could be subject to the patent (assuming the patent is granted).
As for your specific example: algorithms can't be patented; they are trade secrets. Specific software implementations of algorithms possibly can be patented. The difficulty, of course, is that deep pockets Paapo can always engineer around the specific software implementation you specify in your application.
I don't understand, why can't you keep it secret? Daniel_Newby talked about rogue employees, but you probably don't have them if you can't afford $10k for the patent. So, how exactly would your competitors get hold of it?
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).
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.
'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.... The distinction is noteworthy, in part, because most of the world is in a true 'first to invent' regime.
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.
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.
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_... (there may be newer versions, but this version has been up since you made your comment)
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.
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.
It's easy to imagine lots of horrid scenarios. In practice these are rare.
What's more common, and much more expensive, is patent "interference" cases.
The US patent system has imposed de facto bookkeeping requirements on inventors anyway. It's just that instead of being called a "patent", it's called "inventor's logbooks".
There's an analogy here between common law title and Torrens title systems. Yes, Torrens has stunning failure modes. But they are rare and easily repaired compared to having to hope somebody, somewhere, doesn't have a scrap of paper you didn't know about.
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.
Text of the Copyright Clause: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
The first-to-file system merely states that the first inventor to file, out of a group of multiple simultaneous independent inventors, gets the patent.
So, for example: you have Inventor X and Paperpusher Y. X invents but delays filing for a patent. Y comes across X's invention, realizes it has not been patentend, and files the patent application immediately. Y cannot and will not ever get the patent, because Y cannot prove invention. If Y were to steal X's notes and other junk and try to use those to "prove" invention, Y would be committing fraud and would be subject to civil and criminal liabilities, including jailtime. X may still have the opportunity to file for the patent application, but it depends on whether other parties (i.e., Z) have independently made the same discovery during the period X did not file.
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.
