United States Transitions To A 'First-Inventor-To-File' Patent System
forbes.com
forbes.com
With this change in law, they may no longer have protection against a patent filed by someone else that they (SpaceX) invented first...simply because they were not the first to file.
This may bring about more innovation because it forces "sharing" of ideas. Even if that "sharing" is done to stop real sharing.
They only had a very limited protection before. First year of use, only shown in public in certified trade shows IIRC.
This is how patents work, they require publication to enrich the knowledge pool and the return for that publication is time-limited government granted monopoly.
If SpaceX can demonstrate prior use then no later filed patent can, if the law is correctly applied, prevent their continued working of that specific invention.
The point is to put pressure on inventors to file, that's one of the two major purposes of the patent system (the other being to ensure due compensation of inventors).
It wouldn't necessarily prevent a patent from being obtained, but it would protect SpaceX from being found in violation. I know this from first hand experience.
When you combine this with Trade Secret law you protect yourself from one of your employees taking your technology, starting a new company and patenting it (potentially coming in under the 1 year mark).
First-to-File only comes into play when multiple entities file for overlapping patents, it simply finds in favor of the first to file for a provisional patent. This avoids a mess of trying to determined who came up with the idea first, which was always a contest of who documented first.
[1] You could still be in violation and not know it as provisional patents are non publicly disclosed for 18 months, so in reality there is technically a 2.5 year window where you can't be absolutely sure someone else has filed.
Anyway, another thing that many people miss on the "first to file" issue is that it's the first INVENTOR to file. So, employee can't leave company, steal the invention, then file if employee was not the inventor.
The law really is only changing in the situation where two people invent the same thing, independently of one another. Under the current law, if both inventors file, only one is entitled to the patent - the inventor who actually invented it first (perhaps determined in an interference proceeding in the patent office or perhaps in court). Each inventor would try to prove the date of invention through documentation (keep those lab notebooks - or that git repo, or the old svn or cvs repo backed up!). Whoever successfully proves an earlier date of invention wins.
Under the new law, it's just who filed first. If two people file for the same invention, there will be a "derivation" proceeding in the patent office to determine whether one of the inventors "derived" his/her invention from another (ie, is that person actually the inventor).
Do you specialise in software patents?
Although I do write software patents for some clients, my practice is more broad than that. I deal with patent, trademark, and copyright (intellectual property) issues, as well as contracts regarding software, books, art, and ip issues. I also handle litigation about all of those issues.
If you think that you have a poor understanding of the law.
So, on most legal blogs, you'll see something that says "I'm not the reader's lawyer."
The period to file was supposed to be important though in non-conflicting applications. It allowed, for example, potential applicants to seek investment in various ways without fear of a specified disclosure causing loss of priority. Do you know how much inventors availed themselves of that ability?
So my understanding they can put some information (but not their whole invention) and get recognized for the patent.
The move your described, you don't tell anyone anything and still have the rights... And that means i may be investing a lot of work on something only you will be able to profit from because i didn't know you invented it.
Basically this stops people from having the cake and eating it too.
Too bad about China.
How is the patent office going to manage the increase? It's not, the system is going to slow down even further.
This also increases the cost of innovation. If I have a business, invent something, and don't patent it - I'm screwed regardless of if I prove I created it three years prior to the filing. In other words, now you have to file patents for everything to protect your ass (because it's not good enough to be able to prove you invented it first X years ago), and that's a very expensive proposition, particularly for small companies. This encourages the patenting of every little detail possible, even more so than today. Because if you don't patent every little detail, now you will have no right to self defense on the basis that you were the original inventor - they can come after you for every rounded corner you failed to patent, so to speak.
This forces everybody into the patent game.
The rationalizations being offered up, such as that this will be good because it forces openness on innovation are not only wrong (all it actually does it make it easier to steal technology for countries that already don't respect foreign patents), but the negatives are going to far outweigh any supposed benefits.
In five years everybody here is going to be complaining about how they really botched this piece of legislation and how it created more problems than the old system. This will turn out to be an extraordinarily expensive and destructive change; it is not the right approach.
What the AIA does is two-fold:
1) It changes the rule from "first to invent" to "first to file" when two inventors simultaneously seek a patent for the same invention;
2) It expands the "prior user rights" defense so that if you've been using a technology commercially for a year before the patent filing, you're not liable for infringement.
So if you weren't going to patent something, and keeping it as a trade secret instead, it's not clear that under AIA you have a new incentive to go patent it. If you weren't going to patent it anyway, there wasn't going to be a "dueling applications" situation, and "first to file" wasn't going to come into play anyway. And if you disclosed the technology instead of keeping it secret, then prior art comes into play and AIA expands the cases in which prior art can be used to invalidate a patent.
I'd personally like to see a merging of the "prior user rights" and "prior art" defenses. It should be possible to invalidate a patent by showing that someone else was using the technology before the patent was filed, even if that other person didn't publish.
Of course, one way to achieve that effect under current rules is to publish instead of keeping technology secret. If the tech community is really opposed to patents, especially software patents, then it should take additional measures to publish exactly how all their technologies work. This is something Google, etc, can take the lead on without waiting for legislation. Establish a rich database of prior art that can be used to invalidate future patents.
Like naughty children, either you share nicely or nobody's having any cake!
:)
Independent invention should be a sign that the idea isn't worth patenting, that it was "in the air" at the time.
They don't, unless people use it and the patent holder wants to charge for licensing.
I don't have facts at hand, but I imagine that like any other thing (starting a business, writing a book, creating an App) 99.9% of patents result in no monetary gain whatsoever. But if we're going to go all in on the property aspects of patents, then I think that morally and ethically, we have to give an independent inventor a share of the property. Anything else just looks arbitrary, and leads to disrespect of patents, "intellectual property" and The Law in general.
It still must be an enabling disclosure, though. That is, it has to teach the public how to make and use the invention.
Because I think a whole load of really obvious rubbish gets patented at the moment, but I do think the foundations of the patent system and the utility of patents ought to be salvaged.
Applications are only published to the public either 18 months after the earliest priority date or after the patent has been granted.
The only other time you might know what they were up to is if they made a public disclosure about the technology. But as that has implications for their own filing strategy, they're not likely to do that in a way that left you an opportunity.
--edit-- this would be because patents (in my mind) are the exchange of protection/exclusivity from the state in return for disclosure to the commons of an idea that might never otherwise become known or publicised.
If loads of folks are coming up with the same idea and racing to patent it, that points (to me) to a situation that patents aren't meant to address - giving exclusivity to someone based simply on them being first of many. If many can come up with it, then the deal is lopsided and the exclusivity shouldn't be granted. IMHO.
More broadly, I think the problems we have with the patent system can be seen as being rooted in the fact that there isn't anyone fully empowered to represent the public interest in this negotiation. The PTO is supposed to do this, in theory, but the examiners are overworked and have the wrong incentive structure.
And, there's a key problem: in a dispute over the obviousness of a claimed invention, the burden of proof is on the examiner to show that it's obvious -- which can be very difficult, particularly when the applicant can reply that anything seems obvious in hindsight. I propose that instead, the burden of proof should be on the applicant to provide objective evidence of nonobviousness.
Such evidence could take various forms: showing that others have tried and failed to solve the same problem; publication in a peer-reviewed journal or conference proceedings; showing that the need for a solution has been long and keenly felt.
Slightly different subject, but I think this the best argument for why software patents, at least in their current form, are bad.
With a useful patent system, the patent library should be a treasure trove of information. People with difficult problems to solve should be wandering through the archives to see what's out there. If the patent is still in force, the license fees should be well worth it, since it solves a hard problem!
Have you even heard of a programmer doing such a thing? I certainly haven't. In fact, the general advice I hear is the exact opposite: actively avoid looking at patents, because you're liable for more damages if you infringe willfully than if you do so by accident.
Not sure of the impact on innovation, but my gut instinct isn't good.
First-to-file just means that if two people apply for a patent, there's no possibility for the second to challenge the first with an interference proceeding[1] to attempt to prove using non-published evidence that you actually invented first.
Also more this will lead to more patents because you have to patent to avoid someone else patenting your stuff bit later and extorting money from you.
Also more patents means more cannon fodder for lawyers for use in future extortions.
And no, you don't "have to patent to to avoid someone else patenting your stuff bit later". You can just publish it, which then counts as prior art.
Even in the USA, even though the legal underpinnings don't recognize a "moral basis", legislation for the last 30-odd years seems to lean towards an "ideas as property" basis. I realize I'm conflating patent with copyright here, but so does the idea of "Intellectual Property". Why else would we grant a nearly everlasting monopoly (via copyright, again) other than to reward a Sacred, Difficult Act of Creation?
You seem determined to find a moral root for what seem entirely to be pragmatic objects of law, but I don't think one exists to be found. If I were to eschew cynicism in answering your question, I'd propose that the legislators behind copyright extensions believe them to be the most effective means of pursuing the purpose of both patent and copyright law defined in the constitution, which I quoted in my previous comment. If we were to admit cynicism into the conversation, I'm sure you could anticipate what my answer might be.
What I'm pointing out is that at least in the USA, legislation since 1976 has moved away from the constitutional basis for copyright or patent, and towards an "ownership" basis. "Copying is theft" type slogans and commercials prove that wealthy entities in the USA are pushing ownership as a moral basis for "intellectual property". The fact that a "World Intellectual Property Organization" exists proves that for a lot of people, "ownership" is a good moral basis for "intellectual property".
I've even heard my 6-year-old daughter complain that one of her classmates 'stole' my daughter's idea for the format of a book report. Ownership, like the idea of a "just price" is just one of those illogical things built in to human nature.
I don't agree that ownership of ideas is something built into human nature; physical property as been with us from time immemorial, but the modern notion of copyright is only a scant few centuries old, having been established by positive law and not recognized under common law. The notion of "intellectual property" is even newer.
Perhaps your daughter is being influenced by the current milieu, and not expressing an intrinsic equivocation between copying and theft that originated within her own mind.
Whatever happened to a "person having ordinary skill in the art"?
FWIW, I agree with the principle. There's a lot of obvious stuff that gets patented, particularly in software.
That's a pretty weird way to define obvious. It is true that sometimes a term used in the law deviates a bit from the meaning of that term in ordinary English, but rarely as far as your definition of obvious does. In English, obvious means that it is easy to discover. It should be readily found by any reasonably competent person who looks.
2. I draft all my own patents(only 1), and found the process difficult, but doable. I also filed my own trademark.
3. I did have an issue with the filing fees. I contacted the offices involved and complained about the fees. I felt the fees might prevent many young inventors fron protecting their invention, or trademark.
4. They told me their was some programs for low income individuals, but I couldn't kind anything. The fees for filing a patent should be based on what a person makes?
The patent office must get funding from somewhere. If the fees don't at least mostly cover their staffing and research needs then huge companies that file a lot become a huge financial burden on the taxpayer, and the taxpayer is then paying for a business advantage for these companies.
Obviously this sucks for the small inventor. I'm not sure how you get around it. The first X a year are free? But then the patents are always filed in individual names and then assigned to the company anyway, so I'm not sure that works.
And there's long been a separate (reduced) fee schedule for "small entities". And it's long been recognized those are still fairly high for situations like the lone-inventor, and such situations make up such a small slice of the USPTO's total revenue, that they certainly could be tweaked to be more accommodating without much net impact.
And because all that was well-known: The AIA included giving the USPTO some fee-setting authority. And one of their first proposals was to further reduce some small-entity fees and to create a new micro-entity status with commensurately-lower fees.
So it's not only a problem that would be fairly easy to address, without much adverse impact, it's actually already being addressed. (Though not really in-effect until later this year).
[1] Much ink has been spilt over the fact that the USPTO brings in more than it takes from the federal balance sheet, yet their budget has been left so low that they're chronically short on resources and thus backlogged.
Anyway, the USPTO has had 50% lowered fees for "small entities" for some time now. The patent office will soon add a new "micro entity" classification (paying 75% of fees) that might help individuals without a lot of money. The total filing cost as a micro entity will be just over 300 bucks. That's pretty reasonable considering the work involved in examining a patent application.
Corporations and LLC's would not get the discount.
I don't think their would be a rush of individual inventors overloading the department with frivilious, Nolo Press enabled patent requests.
Plus, if that became reality; they could drop the program.
If anyone reads this, avoid any patent service that advertises on t.v.. Research your patient before you hire a attorney, or DIY.
My main gripe was with the Tradmark fees. I don't remember the fee, but even if it was $300.00--that's still too high--especially for a www.mywebsite567.whatever?
I personally think the larger the company, the higher the fee. Didn't Apple try to patent rounded edges?
Anyway--I appreciate micro entity reduced fee info.
Here are some thoughts, cost overviews, and what to think about for a startup patent strategy: http://kylethered.tumblr.com/post/45273614239/good-rules-of-...
Before this law, public disclosures prevent the inventor from giving patents. In a conference I attended, the scientists were very careful to avoid publicly disclosing the details of their inventions for fear of removing their ability to file for a patent. But the brief blurb in the article mentions that if inventor A publically discloses their invention before inventor B files, then inventor A gets the patent.
Could someone clarify?
This property is unfortunately not generally present in patents once patent lawyers are done broadening the scope of possible 'embodiments' and rendering the language unintelligible.