International Patent Matters from a Canadian Patent Lawyer’s Perspective

First-To-File vs First-To-Invent: Why is there a Dispute?

Patent law reform legislation, for the third time, is presently pending before the US Congress. During 2009 the debate over Health Care has moved this subject to the back burner. But in the last days of 2009, initiatives are now being taken by proponents to save the old first-to-invent patentability system rather than switch to a first-to-file concept as adopted elsewhere in the world.

Defenders of the existing first-to-invent system argue that it spares inventors the burden of rushing to the patent office to make a record of their inventions. If you are the first inventor under the existing US system, then you’re entitled to delay for up to one year from the date of your conception of your invention with complete security. You may do so only so long as you are working on reducing your invention to practice, by either building an apparatus that incorporates the invention or by filing a patent application. But if an inventor is diligent in this respect, there is no rush to the patent office.

The patent law blog Patently’O run by Prof. Dennis Crouch addressed this issue once again on December 10, 2009:

http://www.patentlyo.com/patent/2009/12/the-matrix-for-first-inventor-to-file-an-experimental-investigation-into-proposed-changes-in-us-patent-law.html

This posting makes reference to a paper of December 4th by Brad Pedersen and Justin Woo of Patterson, Thuente, Skaar & Christensen, P.A. in Minneapolis entitled “The ‘Matrix’ for First-Inventor-To-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law”:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1518660

Amongst numerous comments made on the Patently’O blog in response to this posting, a strong defense of the existing first-to-invent system was put forward by Ron Katznelson, whose views are representative of many of the 160,000 small business and startup companies represented by the The Small Business Coalition. These comments were based on the practical experience of small businesses and startups who count on patent rights to get themselves under way but cannot afford to comply with the early filing requirement of a first-to-file system.

Here are Ron’s comments on this issue:

“Consider an actual profile of a five-year R&D and invention effort of the Mova® system developed by my friend Steve Perlman. It is described in Steve’s Columbia University presentation available at http://j.mp/Mova-development. Slide 35 shows that no less than fifty important inventive ideas had been conceived, evaluated and tested over periods spanning months or years in the course of this system’s development (labeled by “invention” squares).

The majority of these inventions proved to be useless. During that time, only about six patent applications had been filed (labeled by “path to success” arrows). In most cases, there was no way of filing prompt and enabling applications. As Steve explains in his presentation, the prospects of such a development effort under FTF would have been dire. Because the cost, effort and time lost to have acted on every one of these inventions would have been prohibitive, this R&D team would have had to frequently face a painful dilemma as to which of these inventions should be written up and filed in a patent application.

Unfortunately, many such premature guesses would have proved wrong, so, under FTF, costly applications would be filed for some useless inventions and patent protection would be lost for other valuable inventions. Investors will not assume such risks, which is why such inventions seldom occur under FTF scenarios.”

Posted by: Ron Katznelson President of Bi-Level Technologies, Encinitas, California, Dec 16, 2009 at 08:25 AM as a comment to the Patently’O Blog of December 10, 2009.
In commenting on the Pattersen and Woo paper (above) Prof Dennis Crouch had observed in his Patently’O Blog of December 10, 2009:
“The Patent Reform Act of 2009 would replace the current “first-to-invent” (FTI) system with a new “first-inventor-to-file” (FITF) system. While touted as a way to harmonize the US system with “first-to-file” (FTF) systems used in other countries, an experimental investigation of a matrix of two hundred typical fact patterns for two competing inventors was analyzed under all three systems (FTI, FITF and FTF) to test this assumption. Based on the matrix analysis, it appears that if FITF is adopted there likely will be changes in applicant behavior and significant extra costs for at least several years as a result of the transition to a new system; and, it is unclear whether FITF really gets the US any closer to patent harmonization.”

Fair enough comment. But where is all this anxiety regarding a switch to a first-inventor-to-file system coming from? If you review the comments of Ron Katznelson above and the recent submissions of The Small Business Coalition on Patent Legislation in a letter sent to the U.S. SBA ( http://bit.ly/SB-Coalition-Letter-to-SBA ) , the great concern appears to be the consequences of pressuring small businesses in America, and particularly new business startups, to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood.
First some clarifying observations.

Compare “first-to-file” and “first-inventor-to-file”

We hear both the expression “first-to-file” and “first-inventor-to-file”. From the many commentaries on the above blog posting it was apparent that some reviewers did think that there is distinction. Do not confuse these as two distinct systems. Unless I’m missing something, I believe that the distinction between “first inventor to file” and “first to file” is moot. It’s been a long time since any major country in the world has granted patents to anyone other than a true inventor. The only reason that the patent office and other proponents of patent law reform are using the expression “first inventor to file” is to make it clear that strangers who hear about an idea are not entitled to receive a patent.

Patents under any new system that will come into effect in the United States will only be granted based on applications for inventions originating from inventors. Either the inventors themselves will file the applications, or companies who have received a transfer of patent rights from the inventors may be entitled to file the applications. But if you’re not an inventor or cannot claim rights derived from an inventor, then you will not be able to generate a valid patent. (Let’s not get distracted by supposed fraudulent filings.)
For simplification hereafter “first-to-file” will be used on the understanding that this means “first-inventor-to-file”.

US Senate Bill S515

Since it is possible to have more than one version of a first-to-file system, the commentary hereafter is directed to the patent requirements of U.S. Senate bill S515. The text of this bill was reported out of the US Senate Judiciary Committee to the Senate on April 2, 2009:

http://www.govtrack.us/congress/billtext.xpd?bill=s111-515

A written report Report No. 111-18 with commentary was issued by the Senate Judiciary Committee in respect of this bill on May 12, 2009:

http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=111_cong_reports&docid=f:sr018.pdf

 

Why Oppose a Change to “First-to-File”?

The Small Business Coalition on Patent Legislation, Ron Katznelson quoted above, and the presenter of the above referenced slideshow, Steve Perlman, are opposed to the switch of the US patent system from first-to-invent to first-to-file as a patenting criterion. They are opposed, amongst other reasons, because business startups will be expected under the proposed law to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood. This pressure will arise because, in the case of competing filings, the first party to file will prevail. It will also arise because under the new, proposed novelty standards, an application must be filed before someone else discloses the idea publically.
Ironically, in terms of competing filings this issue of first-to-invent vs first-to-file relates only to collisions between similar applications at the patent office seeking to claim the same invention. The incidence of such collisions apparently is down to, on the order of, a hundred or so per year out of 300,000 or 400,000 applications (collisions may not be recognized for several years). Still, the issue is bigger than that.

Indeed, the Small Business Coalition believes that inventorship contests – Interferences - are irrelevant in this debate due to their minute number. They are concerned that harm will arise due to the “race to the patent office” whether or not a collision occurs with a competing application. This is because applicants would have to decide on a basis of incomplete information which new ideas to file on, triaging among a number of potential applications. They contend that “the harmful effects of FTF … will be in losing patent protection on inventions for which applications will not, or could not, reach the USPTO.” They are also concerned that “harm will be inflicted when inventors race to the patent office with the wrong application, for the wrong invention, and for the wrong reasons, exhausting precious resources in the process.”

Commentators thinking that a switch from first-to-invent to first-to-file will create a “race to the patent office” are significantly correct. The issue relates to whether the law should be changed to encourage inventors and businesses that aspire to file patent applications to file early and file often.

Existing Incentive to File Early

There is in fact an incentive to file early under the existing laws. If an Interference is going to occur, under the present US law considerable procedural advantages accrue to the party who files first.

Additionally, apart from competing filings, there is a strong incentive to file early in order to avoid the effect of damaging prior art. Under the present American system any prior art that has been in place for more than one year before the actual American filing date is fatal. Delaying your US filing will expose you to this risk since you do not know if a prior publication has already occurred and may become more than one year old by the time you file.

Futher Incentive to File Early Under S515

Actually, there is an additional feature of the new proposed law that will increase the incentive for the early filing of US patent applications. The proposed law will abolish the ability to “swear back” of the invention disclosures originating from others which are published in the year prior to the US filing date.

Under the existing patent regulations, 37 CFR 1.131 provides that, if the examiner cites a public disclosure which qualifies as a bar under the present novelty standards and this disclosure has occurred within the one year grace period associated with the filing, then an applicant can remove this reference from consideration by filing a declaration that they made their own invention at a date earlier than the date of publication of the cited reference. The same treatment also arises where the Examiner cites an earlier filed application made by another that discloses the same invention. (In cases where the same invention has been claimed, an Interference may be declared.) This declaration should contain support confirming due diligence on the part of the applicant in reducing the invention to practice, or effecting a patent filing as constructive reduction to practice, from a date prior to that of the cited reference up to the date of the actual US filing.

Rule 37 CFR 1.131 exists because it would be unseemly for the patent office to grant a patent in cases where an applicant is unable to swear back of such a reference. If the applicant can’t swear back of the reference, then the applicant would not qualify as a first inventor. Someone else must have thought of the idea in order to publish it first.

Swearing back under rule 1.131 does not close the book on the validity of any patent that may issue in such circumstances. The originator of the prior publication may actually be the first inventor, or may even have engaged in activities that would constitute statutory bar, e.g. effecting a public use or an offer for sale in the United States more than one year prior to an applicant’s filing date. But these issues are not resolved before the patent office. They are left for subsequent litigation, if this should occur. In this sense examination at the US Patent Office is not complete.

Under the new first-to-file system, the ability to swear-back of a prefiling publication occurring in the grace period year would be removed. Applicants would be encouraged by the provisions of the law to file applications at an early date. To preserve their rights, they should file their applications early so as to predate any publications by others. In this sense, there would be pressure on inventors to make an early filing of the US patent office.

Proposed Alternative to Early Filing – a new legislative concept

Under the proposed law of S515, a further feature would give applicants the option, as an alternative to filing, of simply publicly disclosing their inventions, cf Sections 102(b)(1) and Section 102(b)(2)(B). Making a public disclosure to disqualify third-party publications as prior art must occur under the proposed law before the third-party makes the invention available to the public.

This feature is similar in part to swearing-back. A distinction, however, is that swearing-back under the present law can be effected after-the-fact. This after-the-fact feature under the existing system is advantageous because, when the swearing-back affidavit is prepared the invention will be fully understood. It will be completely described in the pending application to the standards of 35 USC 112, and the nature of the competing disclosure will be known. Under the alternative, somewhat equivalent sections of S515, the public disclosure will have to occur in the dark, without the advantage of knowing the nature of the final invention or the reference that is to be overcome.

This option of publicly disclosing an invention in order to remove subsequent published art from consideration is not further defined in S515. As written, such a public disclosure could occur anywhere in the world, in any manner that would qualify as a “public disclosure”. Accordingly, the proposed legislation may contemplate accepting obscure public disclosures, even in cases where such disclosures are contrived. Rather than make a disclosure in a prominent manner, an inventor may wish to make a public disclosure known only to a few people in order to obtain an effective US filing date. At the same time, they may be able to avoid the possibility that competitors may learn about an inventor’s plans at an early date by limiting the extent of this disclosure. Is this the intention of the legislation?

Public disclosures may also occur unintentionally, as in the case of a public use of an invention. But such disclosures, whether intentional or not, will probably have to meet the standard of being “enabling” in order to protect a subsequent actual patent filing from being defeated by the prior public disclosure of a third-party.

In the case of the public use of an invention, the character of the disclosure will be established by the invention itself. But even if parties were to intentionally publish written descriptions of the invention, then this latter procedure will be still subject to the frailties of the ability of an author or draftsman to capture and described the essential nature of an invention. In particular, this drafting exercise would necessarily occur at an early date, possibly before an invention is fully understood.

Accordingly this “public disclosure” option for sheltering an application from subsequent prior art will not be equivalent to a declaration under rule 37 CFR 1.131. The swearing-back declarations are always produced after the fact, once an application has been filed and the understanding of the invention is presumably complete. But the proposed “public disclosure” option does go part way towards providing a procedure somewhat similar to that available under present rules 37 CFR 1.131.

Multiple Filings

While the new patent system does encourage people to file early, it also allows an applicant to file often. You are allowed to file once and then make multiple supplemental filings upgrading the story of your invention over the following year. Such extensions must meet novelty requirements at the time that they are filed. At the end of the year, the “priority” year, you are obliged to file a final invention disclosure and thereafter the story is frozen. You can claim what you have described, but if you forget to describe something then you cannot claim what you have omitted to include in the frozen final specification. You have to start a fresh application for the new matter, if it’s still possible to patent the new matter. But the final application can consolidate the information in all of the prior filings into a single, final presentation.

As a bonus, if applicants pursue the route of making a replacement filing at the end of the priority year, then they will be able to extend the term of patent protection by a further year.

This system is available equally in Europe as it will be available in the United States. These provisions are, in fact, a feature of the present US law. While this procedure is available in the United States today under the existing law, it is an option. The alternative still exists today of relying on entitlement as a first inventor and waiting up to one year before addressing the exercise of reducing the invention to a written disclosure.

But opponents of the new system will argue that being encouraged to file even multiple, partial, “sloppy”, patent disclosures during a priority year is more onerous than the luxury of being able to avoid making a patent filing for up to one year after an invention is initially conceived. Against this criticism must be balanced the advantages of adopting an absolute world novelty standard as between strangers for a new US patent law.

So far this article has addressed the steps an applicant must take in order to prevent the public disclosure of an invention or the filing of a competing application by another from prejudicing their right to obtain a US patent. First-to-file deals with the issue of competing applications and the timing for when an applicant must act. However, the pending patent legislation in S515 will also change the types of public disclosures which have to be beat (by filing or publicly disclosing an invention) in order for an applicant to preserve their patent rights. This issue is properly identified by the title “Novelty Standards”.

Novelty Standard – Present US Law

A largely unappreciated issue is not the risk of collision of applications at the patent office as creating a race to file early, but a change in principles as to what constitutes a “novel” invention that can be patented in the United States. Presently the bars to patenting in the US are that the invention must never have been:

1) described in a printed publication issued anywhere in the world
2) in public use within the United States, or
3) on sale within the United States

more than twelve months before the filing of the application in the United States.

Public use or offers for sale occurring outside of the United States do not count. Disclosures occurring anywhere that do not qualify as a printed publication (now interpreted to include electronic publications), or as public use or offers for sale do not count as well.

The full present US patentability requirements may be found here:

http://frwebgate.access.gpo.gov/cgi-bin/usc.cgi?ACTION=RETRIEVE&FILE=$$xa$$busc35.wais&start=219166&SIZE=11270&TYPE=TEXT

By way of contrast, the new law proposes that anything made “available to the public” anywhere in the world in any manner will give rise to a patent bar.

These novelty criteria are at in addition to the stipulation that, if someone else files for and claims the same invention then you must establish that as between yourself and the other party, that you are the first inventor. And if someone else publishes a description of the same invention within the one year grace period preceding an applicant’s filing date, then the applicant must establish that the applicant conceived his invention before the publication of such disclosure.

Combined Effect of Existing Law

The total effect of the existing law is, if you are a first inventor, then you have one year to delay your own filing from the date that you or anyone else first releases the invention to the public in a manner that destroys the invention’s novelty. If such a public disclosure by someone else does occur in the year preceding your own filing, then you must satisfy the patent office that you made your invention before the release of such public disclosure. Otherwise you could not possibly be the first inventor.

The point is that under the present system, if you are first to invent, then you don’t have to file anything at the Patent Office as long as your eventual filing occurs within less than one year of any of the above three types of disclosures. (There are other issues relating to “diligence” in reduction to practice when you are competing with someone else’s filing).

So long as you file your application within one year from your date of conception, you cannot lose your right to obtain a US patent. This is the major advantage of the existing first-to-invent system. This benefit exists irrespective of the type of public disclosure or activity that would otherwise invalidate a patent application.

Patent Novelty Requirements - New Novelty Standard

The proposed first-to-file system is modeled in part on the patent laws presently applying in Europe. The primary objection of critics is that they oppose the concept of a “race to the patent office”. There are two reasons for such a race to arise under a pure, European style, first-to-file, absolute world novelty system. One reason is the necessity for an applicant to file an application before another inventor files an application for the same invention (a rare occurrence). Another reason is to file before there is a public disclosure that destroys the secrecy of an idea. Under the European style, first-to-file, absolute world novelty system, a concept must be a secret at the time of filing in order to obtain a patent.

In conjunction with switching to a first-to-file system, the legislation before Congress will also change the novelty requirements.

According to the legislation before Congress the novelty requirements for obtaining a patent will be changed so that if someone else makes the invention “available to the public” anywhere in the world, then it will then be too late to file for a patent in the United States, cf section 102(a)(1)B. This is called “absolute world novelty”. You can be defeated not simply by someone else filing first, but also by someone else making the invention “available to the public” anywhere in the world in any manner. The old novelty bars of described in a printed publication, or in public use or on sale in the United States are still present, but they are no longer limited to the United States. With the exception of “on sale”, these new novelty requirements appear to be subsumed in the expression: “available to the public”,

The person who makes the invention “available to the public” may be the second inventor, but their publication will spoil your right to get a patent unless you meet the new filing or disclosure requirements under the new legislation. (There are further aspects of these disclosure requirements concerning enablement requirements that need to be addressed separately).

Public Disclosures from Differing Sources - “Self-originating” grace period

The US patent law reform package adopts absolute world novelty with certain special additional provisions. Those provisions treat public disclosures in two categories. Public disclosures can originate from two sources: the actual party who is applying for a patent and from a third-party acting independently of the patent applicant. Addressing the second case, such a third-party may choose not to file for a patent. In fact, this could happen on more occasions than the incidence of having two parties file for the same invention. People make public disclosures of their own ideas all the time without thinking of patents. They automatically, immediately, lose their right to obtain a patent in Europe. Perfect examples are professors at universities who give public addresses on their research. But the proposed US patent law treats this situation differently.

Under the proposed US law the patent applicant himself may make a public disclosure and not be prejudiced by that disclosure so long as they do not delay more than one year in filing a US patent application. There are other dangers to delaying a filing, but at least this type of disclosure is excepted.

Because of the existing one-year US grace period, under the existing law your own disclosures made within that year will not count against you. Combined with the first-to-invent test for patent entitlement, Americans interpret this as a license to delay their patent filings for at least up to one year from their date of invention, and possibly further if no public disclosures have occurred. And if they are indeed a first inventor (which you cannot know for sure) then you will be safe.

This modified “self-originating” grace period under the new law is part of a compromise intended to make a first-to-file, absolute world novelty system more palatable to the American public. This self-originating grace period is similar in one respect to the existing grace period: it protects the applicant from negative consequences when they disclose their own invention publicly before they file, either by way of, for example, an announcement or through public testing. This provides flexibility for a person who makes an invention and either intentionally or accidentally discloses it publicly before they file for a US patent.

Americans taking advantage of the self-originating grace period under the proposed new law will simultaneously lose their right to obtain a patent in Europe. Europe does not provide such a grace period. The moment that an inventor discloses his invention so as to make it “available to the public”, he will destroy the secrecy of his own idea. This terminates the ability of an inventor or anyone else to obtain a valid patent on that idea under the European system.

Nevertheless, the incorporation of the sheltering feature of an applicant-originating grace period into the new US patent law reform proposals goes part way towards softening the impact of a switch to the new system.

Public Disclosures from Third Parties – Key feature of Absolute Novelty

But the new system does not protect applicants against independent disclosures by third parties. If someone else, acting independently of a subsequent patent applicant, discloses an idea publicly, either by way of an announcement, a published paper, or simply through use of an invention in a public manner, then the rights of an inventor who subsequently files to obtain a patent will be terminated. Such inventor under the US proposed law will be subject to the novelty requirement of “absolute world novelty” at the time of filing his application. If someone else has broken the secrecy of the idea, it will be too late to file to obtain a patent in the US under the proposed regime. To this extent, US inventors will be under pressure to file early.

Balancing Considerations

A primary complimentary feature of an absolute world novelty patentability requirement is that anyone who wishes to destroy the right of another to obtain a patent on an inventive concept merely has to disclose that inventive concept in such a manner as to make it “available to the public”. The disclosure must probably be sufficient to enable others to adopt and exploit the invention. But it will not be necessary under such a system to file a patent application if an inventor’s concern is merely to ensure that others do not obtain a patent.

To this extent the proposed patent law will import into the scheme of the nation’s patent regime this advantageous feature of adopting an “absolute novelty” standard for patent entitlement.

Conclusion: Switching to a First-Inventor-to-File System

The opening question posed was to query the source of the existing anxiety regarding a switch to a first-inventor-to-file system. The link quoted at the beginning argues that many ideas end-up as dead ends. It argues that it would be wasteful to expect inventors to file multiple provisional applications for such dead-end concepts.

Business startups will be expected under the proposed law to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood. Particularly small and start-up businesses will, due to their limited financial resources, lose-out on obtaining valuable patent protection on inventions for which applications will not, or could not, reach the USPTO in time to beat-out a public disclosure by a third party.

The counter to this argument is that most valuable new ideas that can support valuable patent rights should be recognizable at the time that they are conceived. Nobody wishes to see a patent system that forces persons to file patent applications for bad ideas. Inventors are expected to filter their numerous ideas and select the ones that justify an attempt to obtain a patent. Essentially, opponents to the new system argue that inventors should be allowed one year to ponder and conclude that an idea is worth the expense of initiating a patent filing.

Proponents of a first-to-file system will point out that an applicant can start by filing an initial application as a US provisional filing, and then file further supplemental applications over the following year, consolidating all of these applications into a final application at the end of the year. Provisional applications need not be complete; in fact, they can be highly informal. This procedure will not only preserve rights under the proposed US law, but also preserve an applicant’s rights to obtain patents in foreign absolute novelty countries around the world.

The other advantage of first-to-file, coupled with absolute novelty is that parties who previously filed applications “defensively” simply for the purpose of preventing others from obtaining a patent will be able to follow the simple expedient of publishing an idea. Then no-one else will be able to obtain a patent for the same idea. This is a major advantage of an absolute novelty system.

The truth of concerns of both sides in this debate will be left to the reader.

David J French
Ottawa, Canada
January 31, 2010
www.CanadaPatentBlog.com    

Posted in Patents, US Law, Articles, For Inventors, For Attorneys January 31st, 2010 by David J. French | No comments

Swearing Back under a revised US patent law: 37 CFR 1.131 equivalent in S515

Dennis Crouch, as part of his Patently O blog is circulating a survey that addresses the first-to-invent/first-to-file patentability requirements. He is doing so in conjunction with a larger survey addressing the extent to which applicants are able to swear-back of prior disclosures published in the one-year grace period before their US filing date. According to the US code of federal regulations applicable to patents, 37 CFR 1.131 provides as follows:

37 CFR 1.131 Affidavit or declaration of prior invention.

(a) When any claim of an application …is rejected, the inventor of the subject matter of the rejected claim…….may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based……

A cited reference means a publication or a pending application filed by another party located by the examiner which does not claim the same invention but which nevertheless either discloses the same invention or renders the applicant’s invention obvious. Swearing-back of such a reference does not close the book on whether a valid patent will be granted. The other party may be the true first inventor and the cited reference may be associated with a public use that could eventually defeat the applicant’s eventual patent. But by forcing an applicant to make a 37 CFR 1.131 declaration, the patent office has at least applied the first-to-invent concept to the extent that the patent that will be granted is not clearly invalid: If you can’t swear back of a reference then you are not the first inventor!

Dennis Crouch has been gathering evidence on the extent to which reliance has been placed by applicants before the US patent office on this procedure. This goes to the heart of the issue as to whether a switch to the first-to-invent system would be appropriate for a revised United States patent law.

Meanwhile, bills are progressing through both the US House of Representatives and the Senate to revise the US patent law in certain fundamental respects. One of the proposed revisions will be to adopt a first-to-file system, more correctly described by its proponents as a first-inventor-to-file system. Not appreciated by virtually all of the commentators is that these two bills pending before Congress contain a remarkable provision for which there is no precedent anywhere in the world. Using Senate bill S515 as a reference, this bill includes a kind of echo of the existing 37 CFR 1.131 procedure. This legislation would amend Section 102 of the US patent law to explicitly provide as follows:

“102(b)

(b) Exceptions.–
(1) Prior inventor disclosure exception.–Subject matter that would otherwise qualify as prior art based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.”

For convenience “subparagraph (B) of subsection (a)(1)” reads as follows:

“Conditions for patentability; novelty
(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–
(A) more than 1 year before the effective filing date of the claimed invention; or
(B) 1 year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor; or ……

Subsection (2) refers to the case where there is a description of a claimed invention in a pre-filed published application.

These provisions are the essential heart of the new novelty requirement that would be established under the revised US patent law. But they must be read as a whole, modified by exceptions. Because of section 102(b) Exceptions.– (1), above, anything that has “been publicly disclosed by the inventor …….” will function equivalently to a swearing-back affidavit. It will be removed from the prior art if it has been “publicly disclosed”.

There’s no precedent for this type of provision in the national patent law of any first-to-file country anywhere in the world. The provision of the exception of section 102(b)(1) as part of a first-to-file system is a very creative preservation of some of the principles of 37 CFR 1.131. The presence of this exception may go a long way towards easing the transition from first-to-invent to first-to-file. But it may require a shakedown period to develop relevant jurisprudence on the meaning of “publicly disclose”.

Public disclosures can be seen as falling into broad two classes namely, one based on the actual presentation of an embodiment of the invention, e.g. a public use or demonstration; and the other based on a communication, e.g. a written description, a seminar presentation, that is made available to the public. An advantage of the first in establishing either priority under a first-to-invent system or disclosure under a first-to-file system is that in the case of a presentation of an actual embodiment, all of the characteristics of the invention will be present in the embodiment. This will be true without the inventor having to reduced to writing a description of the invention. The second class of disclosure is strongly dependent on the ability of an author to perceive and described the invention fully. Patent jurisprudence is replete with examples of insufficient disclosures being incorporated into the written description of a patent specification.

I predict that there will be some robust US PTO proceedings, perhaps arising first by way of opposition or re-examination, on the issue as to whether and what has been “publicly disclosed” so as to fall within the above exception.

Postscript :  The Senate bill S515 was reported from the Senate Judiciary committee to the Senate on May 12, 2009 and can be viewed by entering the following on Google:  U.S. Senate Report No. 111-18

Posted in Patents, US Law, Articles, For Attorneys November 16th, 2009 by David J. French | No comments

The Crisis in the American Patent System


                                    The Crisis in the American Patent System
                                                           Part I

            This first section is part of a multi-part paper addressing the challenges presented by the American patent system.  The first part is historical.  The second part to follow addresses proposals pending before Congress in 2009 to improve the operation of the American patent law in the 21st century. A further part will provide a comparative analysis of the experience of Europe and Canada with the principles of “absolute novelty”, more precisely “absolute world novelty”, adopted in those jurisdictions in 1978 and 1989 respectively.

                                      The Patent Crisis of the 1830s   

          In the 1830s, the United States was undergoing a patent crisis.  It is not the same patent crisis that it faces today, but something can be learned from what occurred in those most interesting years. 

The Patent Act of 1790 

          On April 10, 1790, President Washington signed the first patent statute into law.  The first patent statute did not create a Patent Office. It directed applicants to file a petition for a patent with the Secretary of State. Then the Secretary of State, the Secretary of War, and the Attorney General were to determine if they, or any two of them, thought “the invention or discovery sufficiently useful and important” to merit a patent. 

          The first officers given this duty were Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph. They called themselves collectively the “Commissioners for the Promotion of Useful Arts,” or the “Board of Arts,” although others called them the Patent Commission or Patent Board. 

          The Patent Act of 1790 did not satisfy applicants, and it did not satisfy those who were appointed to administer it. Applicants did not like the strictness with which the Patent Board determined who should and who should not receive patents. There was no appeal from the discretion of the Patent Board. The members of the Patent Board had high positions in the Government and did not have sufficient time to spare to run the patent system.  Thomas Jefferson wrote a letter years later in 1813, stating that the investigations of patent applications had required more time than the members of the Patent Board could spare from their higher duties and that the applications had required a great deal of time to understand and treat with justice.

          In a 1792 letter to Dr. Hugh Williamson, the chairman of a congressional committee to revise the patent law, Jefferson wrote that it distressed him to render crude and uninformed opinions on valuable and important rights without being able to devote the full attention that the petitions deserved. He drafted a bill to reform the patent law on December 1, 1791, and discussed it with Dr. Williamson.  Mr. Jefferson’s bill would have eliminated all examination and made the Secretary of State the registrar of patents, with determinations of patent validity to be made by the courts.

            While Mr. Jefferson’s bill as written was not introduced into Congress, some of its provisions were incorporated into a bill that was passed as the Act of February 21, 1793. It is likely that the primary reason for the Act of 1793 was not the dissatisfaction of inventors but was the inability of the Patent Board to administer the Act of 1790 while carrying out their other duties. 

The Patent Act of 1793 

          The Act of 1793 continued in effect, with only relatively minor changes, through 1836.   Meanwhile, the industrial revolution in America was well begun under this act, with all of its shortcomings.

          The Act of 1793 went from the extreme of rigid examination to the opposite extreme of no examination at all. The Patent Board was abolished. The State Department was to register patents, and the courts were to determine whether the patents were valid after they had been granted.  The State Department could not refuse to issue a patent.  If a proper description and drawing were submitted, a model supplied, the proper allegations made in an affidavit, and the proper number of witnesses supplied, a patent would be issued.

          About May 12, 1802. Dr. William Thornton was appointed as a chief clerk eventually designated as a Superintendent to be in charge of the patent work. When a patent was demanded, he was in the habit of doing a cautious examination of all that had been done in the same field before the receipt of the application.  He recognized that these examinations were not required by law and were more duties of conscience than of office. He knew that the applicants did often not receive his resulting cautions with thanks, but he considered it proper to guard against deceptions.  Inventors may begin by deceiving themselves as to the originality of their inventions, and end by deceiving their fellow citizens. He could not refuse a patent for lack of novelty, but could point out that lack.

          There was no requirement that the applicant claim specific features of his device as the novel part of his invention. But Thornton still examined applications, comparing them with prior patents and with the large library of technology books kept for the purpose. When he found a good reference to anticipate an invention, he would write to the applicant, explaining the reference and pointing out how limited the patent on the invention would be if it were allowed to issue. Then, if the applicant still insisted on his patent, Dr. Thornton would write across the back of the issued patent the identity of the known references.  If Thornton convinced the applicant to withdraw his application, he could return the payment (if the money sent by the applicant had had not already been paid into the Treasury).

          On March 28, 1828, Dr. William Thornton, Superintendent of the Patent Office since 1802, died at his home in Washington, D.C. Upon Dr. Thornton’s death Dr. Thomas Jones was Superintendent of the Patent Office for two years, from 1828 to 1830, when he was succeeded by Dr. John D. Craig, who remained in office until 1835.

          The first annual report on the condition of the Patent Office was issued in December 1829 by its then new Superintendent, Dr. John D. Craig.  An examination of the record shows that Dr. Craig accomplished a lot during his tenure, but he was arrogant, subject to rages, disagreeable to patent applicants and their agents, and was a domineering tyrant toward the subordinate employees in the Patent Office.

          By 1834, Congress was investigating the operation of patent office.  In testimony given to a congressional committee Dr. Craig said that he did not take the trouble to read specifications. He believed interferences could occur only between applications that were filed or put in condition for allowance on the same day, which virtually never happened. Five years into his tenure, Dr. Craig had never submitted any applications to arbitration for interference. Craig believed that if an application was filed with all the proper papers and with the fees paid, a patent should issue, even if its contents were nonsense. The Act of 1793 intended that the courts should sort out such matters, not the Patent Office, and Dr. Craig had no intention of doing more work at the Patent Office than the law required.

         The results of the investigation of the patent office and Dr. Craig were presented on March 15, 1834 by Mr. Aaron Dayton to the Secretary of State.  Mr. Dayton found that Dr. Craig had indeed failed to declare interferences where it should have been done, that he had discontinued keeping the Caveat Book without which it would be impossible to carry out his duties properly, that he had unnecessarily and imprudently allowed correspondence of the office to be destroyed, that he had given applicants incorrect information from a misunderstanding of the law, and that he had been inattentive to duty in not reading specifications before issuing patents.  The Secretary of State notified John D. Craig that he was dismissed. This was said to be because of his expressed belief that the rule forbidding clerks to receive money for assisting applicants was tyrannical. 

          Henry Ellsworth applied in January 1835 to be Commissioner under the Spanish treaty but instead was appointed Superintendent of the Patent Office.  He took the oath of office on May 11. One of his early reports suggested that some revision to the patent law should be made to eliminate the need for signatures from so many officials, including the President. He noted that 50 patents were then awaiting the signature of the President. 

          John Ruggles was a lawyer who had been elected to the Maine legislature, rose to be Speaker of the Maine House of Representatives, and was later a Justice on the Maine Supreme Court. In 1835, he was appointed by the Maine legislature to be a U.S. Senator from Maine. 

          Based upon his own interest in obtaining a patent, on December 31, 1835 Senator Ruggles made a speech to the Senate to propose that a Senate Patent Committee be set up. He said that he had recently had business to transact at the Patent Office, and while there he had inquired into the causes of delays in issuing patents. His inquiry had revealed to him a number of defects in the patent laws, which had not been amended for nearly half a century except for extension of rights to certain foreigners. 

           Patents were issuing at the rate of 800 a year, with an increase to 1,000 a year expected within a year. Back when 50 patents a year were issued, it may have been appropriate to have each patent signed by the Secretary of State, the Attorney General, and the President of the United States, but by 1835 it took three months to get all of the necessary signatures to issue a patent. 

          Because the Patent Office officials had no discretion to refuse a patent for an invention that was not new or useful, applicants had been known to copy inventions on display in the model room and to request and receive a patent.  This occurred despite knowledge of both the applicant and the Superintendent that the invention was not new. When the resulting patent was divided into license rights by states and counties, and the licenses for the fraudulent invention parceled out to ignorant buyers, who were shown documents signed by the President with the Great Seal of the United States, significant money could be made. Such fraudulent sales of licenses were estimated to amount to half a million dollars a year. 

          The proposed committee was set up, and Mr. Ruggles was made its chairman. 

          Mr. Ruggles made a formal inquiry to the Secretary of State for information on how the Patent Office should be reorganized. On January 29, 1836, Mr. Ellsworth as the then Superintendent of Patents wrote a long responsive letter to Secretary Forsyth, setting forth all of the defects and suggesting corrections. This letter was apparently derived from the suggestions that one Charles Michael Keller, a patent office machinist, had made to Ellsworth.  Keller, then 25, had been working at the Patent Office since 1822 where he even as a boy had replaced his father as a machinist when his father died. By 1835 he was the longest serving employee in the Patent Office.  Keller had been assigned the duty of advising applicants concerning requirement for novelty of their inventions, failing which their patents would be invalid and unenforceable even though granted. 

          The Act of 1793 had intended the Patent Office to issue any patent properly applied for, and to leave it to the courts to sort out who should have what rights. But matters had reached such a stage that, while 800 patents a year were being granted, there were currently more than 100 suits pending in court regarding the rights of patentees. Mr. Ellsworth predicted that such suits could only increase until some methods were provided to stop the frauds now openly practiced on the patent system. 

          The issuance of patents to pirates was a common occurrence, and indeed the Patent Office furnished every facility to aid them. Copies of models of previous inventions were made in the model rooms and used to demand patents for similar inventions next door in the Superintendent’s Office. Even when an applicant was told that his invention was a direct copy of a previous invention, as had happened the previous week, he demanded and obtained his patent for the same invention. With the Great Seal and the signature of the President on his pirated patent, the pirate patentee could sell state, town and county rights all over the country to people who thought that the Great Seal and the signature of the President actually meant that the patent was valid. The present system provided a rich harvest for lawyers, but ruin for many an honest mechanic. 

          Jefferson had suggested in 1813 that the head of the Patent Bureau be given discretion to prevent the issuance of a patent which interfered with an earlier patent or which was destitute of novelty. Mr. Ellsworth repeated the suggestion. He wanted scientific men to be induced to take positions in the Patent Office as Examiners of Patents, to have a suitable library to aid them in their examination of applications to detect interference with other patents or want of novelty. Mr. Ellsworth had recently found in a German book a complete anticipation of a recently issued U.S. patent. He wanted the Patent Office to have a good library to aid in examination of patents. 

          In a comparison of the merits of the United States patent system with that of England, Mr. Ellsworth pointed out that in the last 60 days he had issued more than 200 patents, which was greater than the annual average in England for the last 10 years. England allowed patents for newly imported inventions, but Mr. Ellsworth considered that the reading spirit of the people of the United States was such that it was evidently better to confine patents here to new discoveries. The temptation to patent in this country was such that it might be well to compel each patentee to publish, if not his entire specification, at least his specific claim of novelty. 

          Mr. Ellsworth recommended that a small portion of the surplus money obtained from patent applications be used to publish all specifications of patents, or at least the claims under the patents. If the material thus published were distributed to the different states, the public would be well capable of guarding against spurious patents. 

          Working with this letter and their own ideas, Senator John Ruggles and Patent Office machinist Charles M. Keller labored together late into the night for many weeks to write a new patent law. Mr. Ruggles, as a former Justice of the Maine Supreme Court, taught Mr. Keller a new respect for jurisprudence that led later to a career in patent law. Mr. Keller, experienced for years since childhood in dealing with inventors visiting the Patent Office, must have taught Mr. Ruggles some of the intricacies of dealing with inventors and inventions. 

          By late April 1836, the select committee had prepared its report on the Patent Office.  After reviewing the history of foreign patent laws and of the current U.S. patent statute, they discussed the frauds being committed because of the inability of the Patent Office to refuse applications without merit. They recommended examination of patent applications and the raising of the new organization above a mere clerkship. 

          The select committee presented a draft statute to establish a Patent Office under the Department of State, to be headed by a Commissioner of Patents, to have an extensive library of scientific works and periodical publications, and, in addition to the necessary clerks, draftsman, machinist and messenger, to have an examiner of patents, the first anywhere in the world, to read patent applications, compare them with what was known in this country or contained in a printed publication anywhere prior to the applicant’s discovery, or in public use or on sale apart from cases with the applicant’s consent prior to the application, and to reject those applications in which the invention was not new. 

          A statute as requested by the select committee was passed by Congress and signed into law on July 4, 1836. In the first part of the year 1836, under the old system 625 patents were granted, while in the last of the same year, under the new law, there were only 97, more than two- thirds of all the applications made being rejected for either want of novelty or usefulness.

           This statute, sixty years to the day after the original Declaration of American Independence, was a second such declaration. Some historians have said it was the most important thing to happen in the country between the War of 1812 and the Civil War. The first Declaration of Independence led to America’s political independence from England. This second Declaration led to America’s industrial independence from Europe. It gave America such an overwhelming advantage in national industrialization that European nations did not at first understand what had happened. 

          American industrial progress was attributed to the native mechanical abilities of Americans. But as Abraham Lincoln was later to say, “the patent system added the fuel of interest to the fire of genius.” Now, much more than ever before, it was possible for an inventive genius to profit by making and promoting an invention, which of course induced men to do so. By the beginning of the twentieth century, most of the industrialized countries in the world had copied significant parts of a statute which was written by a lawyer with an interest in his own invention and by a boy genius who started working in the Patent Office because his father could not afford to give him a good formal education and had to teach him by example. 

David J. French
Ottawa, Canada
www.CanadaPatentBlog.com
 


      

1 Part I taken from The Patent Office Pony by Kenneth W. Dobyns, used with permission of the author.  Copyright 1994, Kenneth W. Dobyns

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Posted in Patents, US Law, Articles, For Inventors, For Attorneys September 11th, 2009 by David J. French | No comments

The Role of Patents in Focused Innovation

Throughout my career as a professional engineer working as a patent attorney I have repeatedly been trying to appeciate why people do not understand what patents are all about. Almost invariably, everyone who has approached me to discuss patenting has arrived with preconceived notions about the subject. I have spent a large part of my career trying to reorient those notions.

In parallel, I have come to recognize that there is a need to articulate the process by which innovators can focus on the most appropriate technology or opportunity for them to pursue. In respect of the patenting aspect, this requires an understanding of the benefits that a patent can deliver, and its limitations. It also requires an understanding of the essence of an inventive advance. This last requirement is closely related to the field of engineering.

A core concept is as follows:

The object in patenting is not simply to obtain a patent on your own product.  For a patent to be of commercial value, it should extend to and cover close alternatives that could compete with your own product. This actually requires an inventor to think about how the benefits of an invention could be achieved in other ways.

An inventor seeking to obtain a valuable and effective patent should engage in “super inventing”. This means going beyond thinking of the original invention in terms of its specifics. Every invention starts-off as an assembly of parts and processes. Instead, the invention has to be understood at its most abstract level. This will help greatly in identifying alternate variations on the original invention. The objective, for patent purposes, is to characterize the larger inventive concept in language that will encompass all of these variants.

Surprisingly, to many, most inventions change over time as inventors come to understand the invention at a deeper, or higher, level. Once alternate variations of an original invention have been identified it will often be recognized that the original invention had its own deficiencies. A modified invention can then be identified that is superior to the original concept. This process can be carried-out iteratively, with the potential for great profit. Not only can the invention be improved, but the prospects for obtaining an effective patent monopoly can be enhanced.

Many examples can be generated where this principle is demonstrated. One example that may surprise people is that of the Wright Brothers patent, granted just over 100 years ago. This patent as originally drafted was deficient in respect of the feature identified as the principle inventive advance. The Wright Brothers did not really understand their own invention.

It is the responsibility of every patent applicant to not only describe their invention in terms of how to build it, but also to define it. The Wright Brothers knew that they had not invented the idea of an airplane that would fly under power. Such a concept had been thoroughly discussed in the previous 40 years and a considerable number of attempts to build a flying vehicle had been made. Steam powered model aircraft had already flown distances on the order of half a mile. Patents are not granted for doing something for the first time; they are granted for originating the idea of how something should be done, that is, coming up with a new idea. The idea of flying was old. To obtain a patent, the Wright Brothers had to conceive of something that had not been proposed before.

The Wright Brothers believed that they had invented the idea of controlling an aircraft so that it would bank to the left or bank to the right - to achieve “roll” - by twisting the tips of the wings. They built a glider aircraft with “soft” outer wing ends that could be warped. But when this didn’t work very well they ran a rope to the tail to correct a steering problem by “slaving” the tail to turn in conjunction with the wing tips. That’s what they thought was the essence of their invention when they filed their patent application.

Once they had filed a patent application they visited the Examiner at the Patent Office in Washington. He recommended to them that they engage a patent attorney. Returning home, they located and met with a patent attorney who appreciated the importance of what they had accomplished. By then they had made their first successful fight under power using their new control system.

Eventually, this patent attorney was able to re-characterize the features that constituted the essence of the real advance that had been achieved, and amended the patent accordingly. Even then, once the patent was issued, the Wright Brothers were faced with “infringers”, including in particular Glen Curtiss, who built aircraft with rigid wings and small, secondary, “ailerons” to control roll.

The story of the litigation that followed provides further valuable insight into the patent universe.

If you think you understand this principle then you can test it out yourself by making a list of all of the features which characterize a scrollbar on a computer screen. How many can you identify? Are you able, in one sentence, to provide defining language which will cover all of these features? If so, you are well-qualified to understand the fundamental nature and challenge faced by inventors when they set out to originally conceive and eventually patent their inventions.

More significantly, you will be well-positioned to engage in “directed innovation” which means conceiving inventions which have an improved prospect of being profitable.

 

 

 

Posted in Patents, Articles, For Inventors, For Attorneys September 8th, 2009 by David J. French | No comments

Invention Harvesting vs Directed Inventing

Gregory A. Stobbs in his 2001 book “Business Method Patents” describes how the classic corporate invention harvesting mechanism, based on filtering concepts presented by workers at the bottom of the corporation, can yield a sizeable patent portfolio in terms of numbers.   But, Stobbs warns, the results often lack focus.  Stobbs goes on to explain how more profitable patenting can be achieved by pursuing an innovation-development business model for the corporation. This involves establishing a proactive innovation procedure within the business organization.

I propose that this process he called: “Directed Inventing”.

A firm can move to a directed invention patenting program by first carrying-out an analysis within the firm as to the firm’s track record in terms of research and development, and the results achieved in terms of patents granted. These results are then compared with the objectives of the corporation and the planned initiatives that the corporation wishes to pursue in the future. The test question should always be: “Are these patents directed to features that could help the Corporation earn profits?”   Often this exercise will disclose the inadequacy of results that have been achieved by the previous corporate patenting program.  Corporate patents will in many cases be shown to lack focus.

A company’s patenting policies should be focused on innovations that have the potential to actually support corporate plans for the future.  In some firms corporate planning for the future may be very thin. In such cases, establishing a proactive patent policy should not be the firm’s first concern. Attention should be focused first on corporate plans for the future.  But when a firm does have clearly established corporate objectives for the future, these can serve as a beacon not only for evaluating inventions for possible patenting, but also for guiding the very invention process itself.

It might be thought that inventions should be generated initially at the level where corporate objectives are well understood.  According to this scenario, senior management develops a wish-list of innovations and the technical staff within the organization are mandated to come up with the procedures and mechanisms to achieve those innovations. This has sometimes been referred to as “white space” inventing: filling-in blank spaces around pre-existing knowledge.  In this scenario, inventions are “pulled” up out of the organization  by management personnel reaching down from the top rather than having inventive creations float up from the technical staff located at the bottom of the pyramid.

Technical staff  located lower down in the organization are necessarily involved in the inventing procedures, and probably must be designated as co-inventors, because an invention is not complete until a full formula as to how it can be implemented is reduced to writing.  Identifying a need does not qualify as making an invention.  Corporate managers who generate an innovation wish-list cannot claim sole credit for any subsequent inventions that arise. Inventions are about solutions. The object is to generate solutions that pursue corporate objectives. Wish-list generators may legitimately qualify as co-inventors, but the technical people who generate solutions are at the core of the invention process.

Both mechanisms, attempting to pull-up innovations from technical staff  below and allowing inventions to float-up from the creativity of such technical staff, will fail to achieve optimum results in the absence of a key ingredient: everyone involved in the process should be well aware of the essential requirements for achieving valuable, patentable, innovations.  What are those requirements?

The essence of a good corporate patent strategy is to patent inventions that matter.  As a corollary, a company should endeavor to make inventions that matter.  These are not the same thing. To achieve both of these objectives an innovation must address:

1)   a relevant invention which consumers will seek out

2)    which is technically feasible to make at a price that consumers will be willing to pay,

3)   which incorporates a feature with a have-to-have-it quality,

4)   which is novel and un-obvious, and

5)   for which there is no close substitute existing   in the marketplace.

The first two items relate to the invention itself, the next three, items 3), 4) and 5) relate to patentability requirements.

Everyone involved in the innovation process should carry these principles close to their heart. Whether located at the bottom of an organization and pushing an idea up to higher management, or located near the top and aspiring to draw-out of technical personnel below support in the form of inventive solutions that address the corporation’s overall planning objectives, persons aspiring to generate a patentable idea should filter their concepts through these criteria.

Once such a concept is identified, care must be taken to ensure that the invention disclosure filed as part of an application at the Patent Office is full and complete, and that the claims are properly drafted. There is still a danger here. The creators of the original innovation and the drafters of the patent should struggle to foresee how others could achieve the same results without falling afoul of the patent claims as initially conceived. A patent should then be re-drafted to foreclose competition from others.  This often requires broadening the invention, which is no small challenge.  This challenge could be added to the above list as requiring the final innovation to be an advance:

6)   for which a close substitute in the marketplace is not likely to arise. 

Meeting the challenge of this requirement is, essentially, a highly creative exercise. It requires intense concentration and substantial further creativity. This is not a procedure that can be left to the patent draftsman alone. It should be pursued by a team of concerned personnel closely associated with the original creators.

Developing a corporate structure for the proper generation of patentable innovations should not be a passive exercise that can be characterized as “harvesting”.  It requires a dynamic response from the persons involved in the process. And they all have to understand the true nature of that process: line worker, engineer, and corporate manager together. Unfortunately, this kind of environment rarely exists in the modern corporate world.

Even if all of these things are properly done and the patent examiner eventually gives the green flag for the granting of a valid patent for a quality invention, there is one last iceberg that may lie in the path of the corporate liner.

After all this effort has been invested and the invention as finally conceived has been patented, another inventor may arrive on the scene with a new invention, never thought of before, which does the job just as well, or even better.  This may a case of failure to properly address item 6) in the above list. That is why it is essential to develop within an organization an awareness of the true nature of an invention and the patenting process. That is why everyone involved in the distillation of an innovation into its patentable essence should be aware of the fundamental principles that need to be applied.

Each patent filed is an opportunity to provide a learning experience for everyone involved. Generating valuable innovations that advance corporate objectives is part of the goal. A further part is generating valuable innovations that are meaningfully patentable. Preparing a patent application is a perfect opportunity to sharpen the skills of critical employees to pursue Directed Inventing as the best way to achieve corporate innovation objectives. Do not let the opportunity pass!

David J. French

Ottawa, Canada

August 18, 2009

Posted in Patents, Articles August 18th, 2009 by David J. French | No comments

Career Choices for Engineers: Lawyer or Patent Agent?

 

As a lawyer with an engineering degree certified as a registered Canadian patent agent, I have on occasion been approached by persons to ask whether they should pursue a career in law, patent agency or both. These are my thoughts on such issue. I went on from engineering to take law simply to broaden my education. I thought I had a narrow education as an engineer. I didn’t intend, necessarily, to finish law school. But I did. And then I had a narrow education in a different direction. Having finished law school it is almost inevitable that you will go on for the further year and a half to qualify as an actual lawyer.

The only problem with going to law school is it takes another four to five years out of your life. And you won’t get rich with your first position. Going to law school is worth it if you enjoy going to law school. I went to law school because I thought it would be worth one year to find out. If you pass your first year at law school when so many others fail, it’s difficult quit.

Engineers have the choice of continuing on in university to qualify as a lawyer. Or they can, directly on graduationg, start their training to become a patent agent. What is the difference between these two careers?

Most lawyers do not appear in courtrooms. Most lawyers do “solicitors work”. This generally focuses on buying and selling real estate, doing wills, administering estates, preparing contracts, separation and partnership agreements and generally advising people on the disputes without necessarily going to court. Probably 1 in 10 lawyers actually goes to court, and the experience is very stressful. You have to have the mentality of a football line-backer to enjoy litigation.

Many lawyers do not make much more than $50,000 or $60,000 a year, even after 5 years from when they qualify as a lawyer. Some lawyers make $100,000 to $200,000; and a few make more than that each year. On average, lawyers make more than engineers. The engineers who make as much money as lawyers are those who become managers and sometimes business owners.

Lawyering in the field of disputes is about dealing with people. You have to interview people and you have to explain things to them. It is your responsibility to give your clients good advice. To do that, you must understand the law, and you must figure out the facts, even if your clients are not very articulate in providing clear and accurate explanations. Furthermore, your clients will often have a very slanted view of things. The difficult moment is when you have to tell them the truth: that they’re not in the right and that they will probably have to settle for less than what they want or expect. Some lawyers find this aspect of practicing very stressful.

Engineering is about dealing with things. You have to understand what the client wants you to do and you have to do it right. While you’re less burdened with communicating with people as an engineer, an ability to communicate will greatly enhance your success in the profession of engineering.

There is considerable status in being a lawyer. In some cases, it’s not truly deserved. But, to their credit, lawyers are trained in law school to see-through issues until they have a clear understanding of the situation. A good lawyer will tell their client that they are in the wrong. However, people don’t like to receive bad news. This may be part of the reason why lawyers do not always have a good reputation. The other reason why lawyers are not appreciated is that they often represent the rights of people who are in the wrong. This is justified by society because you never know who’s in the wrong until a trial decision reaches its conclusion. But trials are iffy things and sometimes do not produce justice. Hence the lawyers who win on behalf of bad clients are both admired and despised

Another reason why lawyers have a dubious reputation is they charge a great deal of money. Nevertheless, if as a lawyer, you commit yourself throughout your career to behaving graciously and ethically on every occasion, generally you will be admired within the profession and even by your many clients, both those for whom you win cases and even by those who lose cases that they have placed with you.

The drafting of a patent specification is quite a delicate matter. While it is clearly an exaggeration in some respects, a comparison with brain surgery is not out of the question. When a patent specification is properly drafted, everything has been done correctly. There are very few properly drafted patent specifications. The Wright Brothers patent, which they wrote originally themselves, had many deficiencies. If litigated today it would not stand-up the way it did in 1910.

As a patent agent, your relationship with your client is critical. You will have to make requests of the client that the client does not want to hear. You will have to tell the client that further research is required, research that they will not want to carryout. You’ll have to warn them that their patent will suffer if they don’t take your advice, but if they don’t take your advice, you have to proceed with what you have in hand. The work is intellectually challenging and quite satisfying if done properly.

What has just been described is the real work of a patent agent. However, in Canada over 90% of Canadian patent filings originate from foreigners. In these circumstances, an employed patent agent may often find himself assigned to the role of operating a post office. Applications come in from abroad fully prepared. After a cursory review, they are filed at the patent office. The real work for such a patent agent only arises three or four years later when the examiner objects to aspects of the application, and even then, most foreign patent attorneys generally take principal responsibility for preparing the Response.

Although, technically, patent agents are only licensed to draft patent applications, many, indeed most of them will provide advice to clients in situations where a patent is thought to be infringed. This can include both representing the owner of a patent and representing the person accused of infringement. These types of services are very lawyer-like in their nature, but a patent agent would never appear in court, at least in Canada, on behalf of a litigant. The exercise of advising on an infringement situation includes either challenging or defending the sufficiency of a patent specification. The work is intellectually challenging and tends the most engrossing. It helps greatly to be an engineer.

If you are a lawyer, an engineer, and a patent agent (lawyers cannot practice as patent agents without qualifying before the Patent Office), this is a very good combination. But if you already have an engineering degree, I would only recommend going to law school if you enjoy the experience of being at law school. Three or four years doesn’t sound like long when you’re young, but when you realize that a person’s working life is not likely to extend much beyond the 40 years between 20 and 60, spending three more years in law school and several more years, possibly five or more, getting up-to-speed, becomes a significant proportion. You’d better enjoy law school and practicing law if you wish to place a law degree on top of your engineering degree.

Whatever a person chooses to do when they start out in the career, it’s critically important that we enjoy the work that they select. A life without work you love is hardly worth living.

Ottawa, Canada
February 15, 2008

Posted in Personal March 27th, 2008 by David J. French | No comments

The Torture of Explaining to Clients - KSR

Every attorney practicing patent law has experienced the difficulty of explaining to clients the principles of patent law. This exercise is particularly challenging when the client, subjectively, has made a substantial advance which the attorney feels is not likely to support the grant of a patent.

Typically, when interviewed, the inventor will describe a number of significant features respecting his/her invention which he/she has developed and believes to be novel. Since these features apparently have not been incorporated into a marketable cartridge made by others, the inventor has the impression that a patent should be obtainable on such a device. As all attorneys know, unfortunately, that is not the full story. Even if the inventor has subjectively made an invention, it is necessary to explain to the inventor the distinctions of patent law and the reasons why a patent may not necessarily be granted. What follows is yet another attempt to present this explanation. Read the rest of this entry »

Posted in Uncategorized, Patents, Patent Prosecution, US Law, Articles, For Inventors, For Attorneys January 17th, 2008 by admin | No comments

US Provisionals and the Priority Year

The priority filing under the world patent system, established by the Paris Convention, reserves the first filing date for a patent application for up to one year for use in making filings in foreign countries. A United States Provisional patent application can serve as such a priority filing. However, US attorneys on occasion may not understand an important feature of the world priority filing system.

A priority filing establishes the right to file for the same subject matter essentially anywhere else in the world, reserving the original filing date, so long as the other world filings are made within one year of the first patent application filed anywhere in the world. However, this privilege may only be acquired once. It applies only to the first filing made anywhere in the world in respect of specific subject matter.

Typically, a US attorney will file a Non-provisional U. S. application within the 12 month period running from the original filing date of the U. S. Provisional application. A temptation may exist, however, to delay filings elsewhere for up to a further year. If this is done, the benefits of the original application, the Provisional application filed as much as two years earlier, will not be available in Paris Convention countries around the world. This is because the second, US Non-provisional application will not have been the first application to disclose subject matter which is also reflected in the earlier US Provisional application.

The second Non-provisional application can give rise to priority rights.
But it can only do so in respect of new matter that has not appeared in an earlier patent application filed anywhere in the world.

Thus a danger exists that, where an American applicant has already
made a U. S. Provisional filing, they may wait for up to nearly a further year beyond the date of the US Non-provisional filing before sending instructions for a filings to be made in countries outside of the United States. They may delay mistakenly assuming that they have reserved a second priority filing date based on the second, US Non-provisional filing. This would be in error.

An application made in Canada on this basis will vulnerable to any third-party disclosure that has occurred before the priority date to which the Canadian application is entitled. That priority date only applies in respect of new matter, appearing first in a foreign application, within no more than one year before the actual Canadian filing date.

The Canadian law does provide a grace period of one year running back from the actual Canadian filing date. The Canadian grace period does not extend back from the original, US Provisional priority filing date. And this one-year Canadian grace period only shelters applicants from public disclosures that originate from themselves.

If a third party has disclosed an invention publicly before a proper priority date has been established, then it is too late to file an application in Canada. Between competing inventors, Canada is on a first-to-file system, and if an independent inventor discloses an invention publicly before a priority date which can be legitimately claimed in Canada, this third-party disclosure terminates the rights of all persons other than the third-party to make a patent application in Canada.

The solution is to always make foreign filings for which priority is to be claimed within one year from the original U. S. provisional filing date.

Additionally, a US attorney should always inquire of the client as to when the invention was first made available to the public by the applicant. Arrangements must then be made to have an application on file in Canada within a year from that first event. This is due to the fact that the Canadian grace period extends back only from the actual Canadian filing date, and is not tied to any priority claim.

Posted in Patents, Patent Prosecution, Canadian Law January 11th, 2008 by admin | No comments

Priority Right When Abandoning And Refiling Applications

“We frequently simply re-file US provisional applications to start new one year periods where clients are not ready to proceed.”

The above quotation is from a US attorney handling a PCT filing on behalf of a US resident inventor. This response was given when, as representative of the beneficial Canadian owner, I inquired about abandoning the US provisional application prior to the filing of a further application in order to restart the priority date. Unfortunately, the abandonment of a US provisional application, while automatic at the end of 12 months from the original filing date, cannot be arranged on short notice prior to that deadline.

The regulatory entitlement to voluntarily abandon the US provisional application is not entirely clear:

USPTO MPEP 201.04(b) Provisional Application
http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_04_b.htm#sect201.04b

The US patent office takes the position that a voluntary abandonment is not effective until it is entered by the office. They recommend that applicants allow a delay of three months for this to occur.

In these circumstances, what problems can arise by “ simply re-filing US provisional applications to start new one year periods where clients are not ready to proceed”?

Article 4C(4) of the Paris Convention provides that:

“ A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.”

Paris Convention Article 4 Priority right
http://www.uspto.gov/web/offices/pac/mpep/documents/appxp_4.htm#parart4

Countries are not obliged to adopt all of the limitations in this paragraph but most probably do. Canada certainly does. The right to restart a priority date is limited in the Canadian Patent Act by the following:

28.4 (5) A previously regularly filed application mentioned in section 28.1 or 28.2 (i.e. the right to claim a priority date for each respective claim) or subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be considered never to have been filed if

(a) it was filed more than twelve months before the filing date of

(i) the pending application, in the case of section 28.1

(ii) the co-pending application, in the case of section 28.2,

(iii) the later application, in the case of subsection 78.3(1), or

(iv) the earlier application, in the case of subsection 78.3(2);

(b) before the filing date referred to in paragraph (a), another application

(i) is filed by the person who filed the previously regularly filed application or by the agent, legal representative or predecessor in title of that person,

(ii) is filed in or for the country where the previously regularly filed application was filed, and

(iii) discloses the subject-matter defined by the claim in the application mentioned in paragraph (a); and

(c) on the filing date of the other application mentioned in paragraph (b) or, if there is more than one such application, on the earliest of their filing dates, the previously regularly filed application

(i) has been withdrawn, abandoned or refused without having been opened to public inspection and without leaving any rights outstanding, and

(ii) has not served as a basis for a request for priority in any country, including Canada.


Canadian Patent Act http://laws.justice.gc.ca/en/showdoc/cs/P-4/bo-ga:s_27//en#anchorbo-ga:s_27

The above provisions are extremely difficult to read. But they make it clear that the replacing application intended to start a new priority date must not overlap with the earlier filing. The earlier filing must have been abandoned at the time that the new priority filing is made. 

Obviously, this language is an attempt to comply with article 4C(4) of the Paris Convention. In all likelihood the national patent laws of many members of the Paris Convention include similar provisions.

The conclusion is that the procedure of: ” simply re-filing a US provisional application to start a new one year period where clients are not ready to proceed” will not necessarily generate a genuine new priority date for use in making filings out of the United States if the second filing overlaps in any way with the first filing. Attorneys beware!

David J French

Ottawa, Canada

Posted in Uncategorized, Patents, Canadian Law, US Law, For Attorneys January 8th, 2008 by admin | No comments

Euro-Excellence Inc. v. Kraft Canada Inc.,

The Supreme Court of Canada has issued a very contentious ruling on copyright as it affects gray market transactions. It is contentious not only because it allows gray market goods bearing copyrighted logos to be imported into Canada, but because the nine judges involved end-up in four different camps.

Kraft Foods Belgium SA (“KFB”) and Kraft Foods Schweiz AG (“KFS”) were respectively, the owners of the Côte d’Or and Toblerone copyrights at issue in this case, as well as manufacturers of chocolate bars marketed under those brand names. The subsidiary of these two corporations, Kraft Canada Inc. (”KCI”) was appointed by these two companies as their exclusive Canadian distributor of Côte d’Or and Toblerone chocolate bars in Canada.

When Euro Excellence Inc. as defendant, having purchased genuine Côte d’Or and Toblerone chocolate bars, (bearing the subject copyrighted logos) from the manufacturers and copyright owners in Europe, attempted to import such products into Canada, KCI obtained injunctions, upheld at the level of the Canadian Federal Court of Appeal, barring distribution of such chocolate bars in Canada so long as they displayed the copyrighted logos. KCI founded it’s right on its status as an exclusive licensee under the Canadian Copyright Act.

The lower court judgments were overturned. Four judges of the Supreme Court ruled that the grant of an exclusive license cannot place of the copyright owner in the category of being a copyright infringer. According to this theory, the exclusive licensee has a right of action against the owner of copyright in contract only. Since Euro Excellence had purchased the chocolate bars from the copyright owners, there were no circumstances under which the importation of bars bearing the copyrighted logos could constitute an infringement in Canada.

These four judges, essentially, made their ruling based on the technical character of the copyright privilege as established by the Copyright Act, according to their interpretation.

Three of the judges, upholding the right of Euro-Excellence to a import the subject chocolate bars, did so on the basis that the Legislature never contemplated use of copyright for incidental markings on commercial products as a vehicle to interfere with the importation of such products. Thus these judges founded their reasons on the intention of the Legislature: ” The protection offered by copyright cannot be leveraged to include protection of economic interests that are only tangentially related to the copyrighted work. … (The Act) is not meant to protect manufacturers from the unauthorized importation of consumer goods on the basis of their having a copyrighted work affixed to their wrapper, this work being merely incidental to their value as consumer goods….. only those distributions which affect the legitimate economic interests protected by copyright will be held to affect prejudicially the owner of the copyright.” Thus these three judges made their ruling based upon a higher, policy-based ground.

Two judges, however, dissented. These judges rejected the premise that there was an exception to copyright infringement for logos on the basis that they are “incidental” to a commercial product. They relied upon the definition of an exclusive license in section 2.7 of the Act which states that such a license grants: ” an authorization to do any act that is subject to copyright to the exclusion of all others including the copyright owner”. Accordingly, these two judges would’ve upheld the finding of infringement based upon a black-letter reading of the Act.

This decision is significant for the distinct approaches taken by different judges to interpreting the scope of private rights granted by the Legislature. Most significantly, three out of nine judges relied heavily on policy considerations to depart from what should judges considered a black-letter interpretation of the law. No doubt law school professors now in their old age would be proud of what their students are accomplishing.

Supreme Court of Canada - Decisions - Euro-Excellence Inc. v. Kraft Canada Inc.

Posted in Patents, Canadian Law, Articles, For Attorneys July 27th, 2007 by David J. French | No comments

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