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:
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” Read the rest of this entry »