From First to Invent to First to File – Is It Good For America?

The last elements of the America Invents Act went into effect on March 16, 2013 in the US. Among the provisions that went into effect on March 16 was the change from “First to Invent” to “First to File”. Under the old standard of “First to Invent”, the default right to ownership of rights to a patent went to the first person, or group of persons, to invent the invention. Others could argue various exceptions to the default rule, but the burden of proof was on them, and the procedural burden and the cost burdens were substantial. And if two different parties invented the same invention, both were put to their proofs to show who invented first.

Under that system, there was certainly an incentive for scientists and technicians to push their respective technological boundaries in order to be first to invent something new, of value. Under the new “first to file” system, the date when someone invents an invention is irrelevant. All that matters is how fast he/she can get a patent application on file with the US Patent Office. Again, there are exceptions that can be argued, but the default conclusion is that the first person to file an application has the default right to ownership of any resulting patent.Then, of course, there are the transitional rules. What happens to the patent applications that were already on file before the new provisions became effective on March 16?Answer – IT DEPENDS!It depends who you believe.It depends who you talk to.It depends what you say to the Patent Office orally.It depends which claims you put into which application. The fact that the application was filed before the new provisions went into effect does not mean that the application remains under the old law.It depends how a Patent Office examiner views your claim or claims.It depends on what you say in your documents that you file with the Patent Office during examination of the application.It depends on what your litigation opponent produces in the way of evidence during litigation.And it depends on how the courts interpret the new laws and new rules – none of which have yet been litigated.The reality – NO ONE KNOWS! We are indeed in new territory – and there is no map. Not that we have not yet procured a map. Rather, all of us collectively will be building that map over the course of the next several years. And patent owners will be paying a heavy price in legal fees for their attorneys who will be building/creating that map.It was interesting to watch the response of the patent attorney bar as the March 16, 2013 date for beginning the First to File system approached. US Patent Office records clearly show that the number of applications filed, in the last 30 days before the First to File system was implemented, expanded enormously. Namely, we all knew that there was greater value to the patent owner under the old First to Invent system than there would be under the new First to File system. So why was this ugly piece of legislation called the America Invents Act? Did someone need a label in order to hide the content of the legislation? Did any of our congressmen talk with any of their patent attorneys before signing on to this legislation? You tell me….The effective filing date of every patent claim is central to several key provisions of the America Invents Act (AIA). As a start, every claim of every application which can claim priority back to before March 16, 2013 has to be looked at carefully, and a determination needs to be made regarding whether that claim is supported by language that was already in the application before March 16.If yes, that claim has no affect on the law which will be used in assessing patentability of the application.However, if not, namely if any claim EVER introduced into an application cannot be supported by language that was already in the application before March 16, then the entire application falls, yes literally falls in value, because the entire application then falls under the new law. And that change, once made, is irreversible.Is that good for the patent owner? If it is, why did so many patent attorneys stay up long nights preparing and filing so many applications immediately before the new law went into effect? You tell me.So how can we know whether a claim is supported by language that was already in the application? Excellent question – and in too many cases there is no answer. Sure there are those, like examiners, who make decisions. But those decisions are certainly open to rebuttal – a process which has been playing out between patent attorneys and examiners, and the courts, for many years.And yet, that determination will determine, for many transitional applications, whether those respective applications fall under the old First to File law or under the new First to Invent law.Now let’s look at what difference it makes whether the application falls under the old First to Invent provisions or under the new First to File provisions.First, the two different provisions differ in determining the universe of prior art available to be used against a claim during examination. Under the First to File provisions, a much greater universe of prior art is available, so fewer claims will be allowable. And of course, those same provisions will be used in litigation in attempting to invalidate patents.Second, since the first inventor to file his/her application has the default right to the patent, there is now an increased urgency/pressure on the inventor’s patent attorney to get the application filed as absolutely soon as possible. Can a few days make a difference? Absolutely – I’ve seen it happen in other cases where other priority dates were involved.So what affect does the new urgency have on the overall process of securing patent rights? While there has always been an urgency to be first to invent an invention, that urgency was satisfied under the old law once the inventor had the invention firmly in mind and could prove that fact with sufficient documentation – unless he/she later abandoned the invention.Under the new law, that urgencycontinues while the inventor confers with his/her patent attorney or finds a patent attorney,continues while the patent attorney works the invention into his/her task list of projects,continues while the attorney does the actual work of preparing the application,continues while the attorney confers with the client/inventor to confirm technical aspects of the invention,continues while the attorney or his paralegal staff prepare and file the appropriate documents with the US Patent Office.With this continuity of the urgency until the application is actually on file in the US Patent Office, what role does this new urgency have on the effectiveness of the overall process? Let’s look at the players:The inventor experiences the same urgency that has always been there to create new technology.The inventor does experience a new urgency to get the patent attorney started with his/her work of preparing and filing the application. Particularly small companies and individual inventors also experience a new urgency to raise the funds to support the cost of the attorney’s work. So some cases where money was an issue under the old law become cases where the opportunity to actually file a patent application will be lost because of a lack of immediately available funds.Staying focused on the America Invents Act, who are the relative winners and losers here?The relative losers – individuals and small business.  The relative winners? Large companies who have established legal budgets.  Patent attorneys who will have to sort out the details of the new law.The US Patent Office, as they have raised their fees about 30% overall in the last two years under new authority in the new law.Now let’s ask ourselves if this is good for America overall.Let’s start with the question “who creates new jobs”? Answer, directly from government sources – small companies and individuals.Now let’s ask the question “who is being rewarded”? Answer, those who, on the whole, do not create new jobs.What am I missing here?All I can say is “three cheers” (not) for our wise government.Once again I ask, what is our government doing to promote new jobs being created by small businesses?

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