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america invents act, IP, Patent

Serious Opposition To Patent Reform From California Senators

Proving that patent reform truly is a bi-partisan issue, California Senator’s Boxer and Feinstein boldly challenged fellow Democrat Patrick Leahy’s Patent Reform America Invents Act and its ‘first-to-file’ provisions. Meanwhile, myself and others in the anti-FTF camp have spent far too much time needlessly debating the interference aspect of the present ‘first-to-invent’ system (where a later filing applicant attempts to prove that he or she was the first to conceive of the invention).  I’ll explain why this argument has been a colossal waste of time, and present the much more cogent argument in favor of the status quo.

But first, in proposing an amendment (hopefully to be voted on today) striking the FTF portion of Leahy’s bill, Feinstein commented:

“As a first-to-invent country, we have been the leader of world innovation, and those countries with first-to-file systems have been playing catch up,” said Feinstein. “I wouldn’t trade America’s record of innovation with anyone.”

Via California senators first to oppose Patent Reform Act

In all honesty, Feinstein is making a lot of sense. The pro-reform camp has been telling us that the current system is de facto first-to-file, and that fears expressed by the anti-FTF camp are “overblown.”  This actually proves much of Feinstein’s argument for her, since the status quo has evidently worked out well.  We don’t need patent reform just for the sake of changing something, we need to make reforms that actually make some sense! If  adopting the reforms will have no significant effect, then we might as well keep the system that we have.

The truth of the matter is, Quinn’s argument about being de facto first-to-file demonstrates that we’ve been arguing the wrong point all along.  Quinn’s argument deals with a process known as an interference, which involves two patent applications simultaneously covering the same invention (or what the patent office calls patentably indistinct inventions). One of the touchstones, although not dispositive, is that the two applications include one or more identical claims.  As you might guess, this almost never happens (at least, not without some help).

Often, particularly before the days of published applications, interference proceedings would initiate when an Examiner noticed two applications that appeared to cover the same invention. If the claims were not identical, the Examiner would suggest a claim amendment to one of the applicants which would result in a situation of having applications with identical claims. This is known as provoking an interference.

So, if this procedure is so rarely used, what is the big deal about switching to first-to-file? Well, more commonly, similar but distinct inventions would be pending in the patent office around the same time. Each of these applications would be held in secret until issuance (or for 18 months), after which time they would become public.  So, consider the following scenario:

Inventor A files a patent application on 6/1/2010. Inventor B conceives of an invention on 4/1/2010, presents it to his patent attorney on that same date, and files an application three months later (typical lead time for patent prosecution) on 7/1/2010. B’s application includes insubstantial differences over A’s application, but since A’s invention is unknown to anyone other than A, B’s application is new and non-obvious.  Two years later, when B’s application is actually examined, A’s application has published and constitutes prior art under 102(e).

Under the current law, Inventor B would be able to prove that at the time the invention was made it was not obvious since B has a provable date of conception prior to the effective date of A’s application (a process known as swearing behind). There is an element of fairness to this, since its hard to charge B with knowledge of A’s application when it wasn’t even on file when B conceived his invention.

However, the current system will determine obviousness as of the effective filing date of B’s application.  Well, as of 7/1, A’s application had already been filed and would therefore be prior art under 102(e), even though it is still kept secret until 12/2011. This is what’s know as the secret prior art problem created by patent reform, and mentioned yesterday (as well as at PatentlyO and TacticalIP).

Quinn explained that there is a really simple fix to the secret prior art issue, which Senator Kyl mentioned on the Senate floor yesterday:

Now, if you are relying on first to invent and keeping the records that you should be keeping your invention notebook or invention record will detail, describe, identify and date conception so that others skilled in the art will be able to look at the notebook/record and understand what you did, what you knew and come to the believe that you did in fact appreciate what you had.  If you have this, you have provable conception.  If you have provable and identifiable conception you also have a disclosure that informs and supports the invention. … If the notebook provably demonstrates conception then it can be filed as a provisional patent application at least for the purpose of staking a claim to the conception that is detailed with enough specificity to later support an argument in a first to invent regime.

Via Much Ado About Nothing Over First to File

In other words, B’s attorney, under the new system, would need to convince B on 4/1/2010 that he needs to authorization to immediately prepare and file a provisional application in order to avoid minimize the risk of having patent rights lost due to novelty or obviousness for things that happen in between conception and filing. B’s attorney would certainly need to convey the dire consequences and sense of urgency to convince B to immediately authorize this expenditure, including the attorney’s fees for time spent reviewing the disclosure and getting it into condition to file.

Why on earth would the AIPLA and its enthusiastic boosters be on board with a system like that?

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