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>For instance, if you came up with a novel software process, didn't patent it, and went about your business, it should theoretically be harder for another company to come along and patent your work. Since our patent system is broken, it hasn't always (maybe usually) worked that way. With "First to File" all you need to do is be first to file. And at a mere $15k to $50k to file, this is an undue burden on startups who are inventing things.

Did you publish it? Was it put out into the public space? If so, it's prior art, and evidence that the patent should be invalid. This HAS NOT CHANGED.

If I make a piece of software, put it out for sale, then someone files a patent after my software has been out in the open, the patent is not new and novel. It should be thrown out.

Again, like tzs said, this only applies if two inventors invent something simultaneously. Under First to Invent, each inventor needs to prove that they thought of the invention before the other. Under first to file, the patent is granted to whoever patents it first.

The problem also applies if one inventor invents something, then another individual gains access to it before the inventor distributes it publicly, and files a patent on it.

But in the more general case, I find it difficult to believe that the notion of Prior Art is unaffected by the elimination of first-to-invent. Under the new rules, if the PTO considers two patents determined to cover the same invention, they will accept the one filed first and decline the one filed later, even if the first-filed invention was invented at a later date. If a patent lawsuit can reverse this decision by finding prior art, then how can these be reconciled?

Maybe the idea is simply to shift the burden of determining the earliest invention date from the PTO before the patent is filed to the courts after the fact?

>The problem also applies if one inventor invents something, then another individual gains access to it before the inventor distributes it publicly, and files a patent on it.

No. This would be fraud(because the "inventor" that filed didn't actually invent the thing) or could be theft of trade secrets(if an NDA is involved). Both of which are covered under US law.

>But in the more general case, I find it difficult to believe that the notion of Prior Art is unaffected by the elimination of first-to-invent. Under the new rules, if the PTO considers two patents determined to cover the same invention, they will accept the one filed first and decline the one filed later, even if the first-filed invention was invented at a later date. If a patent lawsuit can reverse this decision by finding prior art, then how can these be reconciled?

If there is clear prior art before either were filed, then the patent would be nullfiied in either a First to File or First to Invent scenario.

I think that you're confusing prior art and what first to file/invent means.

First to File and First to Invent means that if two people file for an identical patent, the patent is granted based on either the filing date or the invention date. The only time that First to File applies is when two independent inventors file for the same patent in the same timeframe. Ovbiously, one cannot try to patent an idea after the patent has been accepted, even if they did invent first.

Prior art applies to all patents, based on the date of the filing of the patents. If I try to patent something that someone else is selling, like a mousetrap design, then it should get thrown out, no matter when I actually invented it, because it's already in production by someone else.

It's arguable whether an algorithm implemented inside your program was published or secret.

> For instance, if you came up with a novel software process, didn't patent it, and went about your business, it should theoretically be harder for another company to come along and patent your work.

First to file doesn't change this. Prior art is still prior art.

This is slightly simplified, but here's the gist. The only change is when Inventor A comes up with an idea first, Inventor B comes up with the same idea (independently!) later, and they both file for patents, but Inventor B has the earlier filing date. Under the old law, Inventor A wins; under the new law, Inventor B wins.

If you're not in that situation, first to file doesn't change things.

That's ridiculous! Inventor A should obviously always win, since he actually implemented his idea before B did. B could have seen A's idea and filed a patent on it.

I'm not sure that's obvious. (And by the way, we're talking about conception of the idea, not actual implementation. You can patent something that you haven't yet prototyped.) Anyway, the entire rest of the world uses a first to file system, so bear that in mind when you say that first to invent is obviously correct.

Don't you have to prototype it to "reduce it to practice"? I thought you couldn't patent ideas that hadn't been reduced to practice.

Filing a patent application is a constructive reduction to practice.

Just to make sure no one gets the wrong idea, it should be noted that the law requires:

   The specification shall contain a written description of the
   invention, and of the manner and process of making and using it,
   in such full, clear, concise, and exact terms as to enable
   any person skilled in the art to which it pertains, or with
   which it is most nearly connected, to make and use the same,
   and shall set forth the best mode contemplated by the inventor
   of carrying out his invention.

(35 USC 112). So, even though filing counts as constructive reduction to practice, that doesn't mean you can just come up with a vague idea, write it up with no clue how to actually make the device, and get a patent. (Well, you aren't supposed to be able to--the examiners sometimes slip up!).

You don't actually have to have built a working prototype, but you have to be telling people in the patent how they can actually build the thing.

> the examiners sometimes slip up

The examiners often slip up. That is really the nub of the problem. The examiners are incentivized to close cases, not to make the right decisions. So if you badger an examiner enough you can get them to sign off on just about anything, e.g. U.S. patents 6368227 and 7126691.

He said A came up with the idea first, not that he implemented it first. You could have this timeline:

    A comes up with the idea, starts working on implementing

    B later, independently comes up with the idea, and start
    working on implementing

    B completes implementations, files for patent

    A later completely implementation, files for patent

Under first to invent, A wins even though B implemented first. Under first to file, B wins.

> B could have seen A's idea and filed a patent on it

A could challenge B's patent on the grounds that B was not an inventor.

Thanks for your detailed response! If that's truly the case, then I could support this move to first-to-file.

One worry I have is that the order might often be more like:

    A comes up with the idea, starts working on implementing

    B later, independently comes up with the idea, and starts
    working on implementing

    B files patent application describing a grossly simplistic, 
    untested implementation of the idea

    A later completes implementation, irons out the bugs, 
    files for a patent, starts a business, adds great value to 
    the economy

    B never really does much with his patent, ends up selling 
    it off to C who sues A for mucho $$$ in patent licensing, 
    or sells it to A's competitor D for mucho $$$, so they can 
    copy A's product with impunity.

If that scenario actually happened, then either A's patent application would contain claims that are not in B's application (and in all likelihood, A's dependent claims would prevent B from completing their product), or A was just plain stupid about waiting too long to file or publish. (The other option is that B gets granted an overly-broad patent, but that's a completely different issue.)

Is this situation really better under the current law though? If you change the situation so that B had the idea first, but the rest of the facts are the same, then the current law produces the same problems.

The reason I suspect my situation is more common than the one you describe, if the first two lines are chronologically reversed, is that the time it takes A to go from idea to practical product and filed patent is assumed to be greater than the time it takes B to go from idea to filed patent, since B didn't wait until he had a marketable product before filing. This new system gives B a corresponding advantage over A.

Perhaps another assumption is that by the time the seeds for an idea are drifting in the ether, A would be more attuned to receive them, and would have started before B.

Though of course the situation you describe should be addressed, this change in policy may be an additional check against abuse that we are losing.

All true. I was just trying to brush all this stuff about conception, reduction to practice, diligence, etc. under the rug.

> With "First to File" all you need to do is be first to file.

No. You have to invent, and then you can file. You seem to think that "first to file" removes the requirement for invention. It does not. It just changes the priority determination in the case where two independent inventors have both invented overlapping inventions.

It's not very hard to "invent" things if your sole reason for being is to copy entrepreneurs' work before they can afford to file, before they can afford to hire a lawyer, pay the USPTO an $8800 fee to ask for a review, and you've got only a short window (which you probably won't know about) to do so.

Look, we need real patent reform and this (even if you think it's only marginal) tilts things yet again in the wrong direction.

> pay the USPTO an $8800

This is a small thing, but filing fees (for a small entity) are $462. The fact that you think USPTO fees are this much indicates to me that you have never had anything to do with an actual patent application, have no real idea what you're talking about, and are basically making shit up. But then, your article conveyed that pretty clearly as well.

Wow. Usually we try to keep things a little more civil here. This filing fee is the smallest portion of what you need to pay in order to file a patent. First, you need to get a patent attorney to help you put your filing together. I don't know what lawyers you use, but this can typically run more than $15k and up to do it right.

Edit: Since I don't seem to be able to reply to your comment, thank you for your sort of apology. You can read at length about this particular bill here: http://en.wikipedia.org/wiki/America_Invents_Act. It's not all sunshine and equivalencies.

Perhaps we can have a discussion about it some time, but as someone who has both been in startups that have pursued patents and been in a company sued by a patent troll, you're just going to have to accept that we have different views on the issue.

Sorry, not really trying to be a dick. But your article reads like you're trying to stir up the (already considerable) patent hatred around here, without really understanding the issues.

And yes, I know the filing fee is insubstantial compared to the legal fees. The point was that you should know that too, if you're expounding on patent law and policy.