Is The “First To File” Provision In The America Invents Act A Good Thing?

The America Invents Act, passed into law in 2011, fundamentally changes the law regarding who gets a patent if two patent applications are pending in the US Patent Office at the same time, claiming essentially the same invention. Why should you care?

Under the current/old law, if two patent applications claim the same invention, the Patent Office declares a special procedure, called an Interference, which is designed to determine who invented first, and to then award the patent to that party who invented first. If there are differences in the applications, such that there is partial overlap of subject matter, only the subject matter that overlaps is at issue. This procedure is tedious, and requires difficult proofs. But in the end, its purpose is to award patent rights to the party who invented first.

Thus, while there is now pressure on the scientist to complete his work as quickly as possible, his/her attorney can take a reasonable amount of time to do a quality job of preparing the patent application, without substantial risk to his/her inventor/client.

As of March 16, 2013, that pressure to complete the task quickly adds the patent attorney to the mix. At that point, not only will the scientist be under pressure to work fast, but so will his patent attorney be under the same pressure.

Will that affect the quality of the workmanship being received by the US Patent Office? Let’s explore that for a moment. Historically, and I would argue that that history continues to the present time, highly qualified, highly experienced, patent attorneys are always straining to complete all the tasks their clients need them to do. We work nights. We work weekends. We get up in the middle of the night as our minds conjure up possible solutions to our clients’ matters, that we have been struggling mightily to solve to the best interests of our clients. Put simply, we are working at max output.

Then along comes March 16, 2013, and we need to add even more urgency to the need to file patent applications quickly. Hmmm…. Wonder where we will get that time? Wonder how alert we will be as we work the eighth day of the week. Oh, sure, we can hire new associates. True. But that requires our time to train them – for a period of several years, while we continue to do the “productive” work that we are already doing.

Sounds like I’m complaining. I prefer to just call it looking at the scenery and describing what I see.

So how will we cope? I, for one, don’t think I can take on more hours, more work, without sacrificing quality of workmanship; and that’s a sacrifice I’m not willing to make. Rather, I expect that I will become more selective in accepting new clients. Perhaps I won’t be able to accept any new clients for a while. But that’s not good community service. Even if I can, I’ll be looking at a prospective new client more closely in terms of personality match, financial stability that assures me that I’ll get paid, how much unpaid research I might have to do in order to meet the needs of the client, and such things as that.

For certain, the added demands on the attorney will add stress to the relationship between the attorney and his/her client.

So is this new provision of the law a good thing? Each person will have to decide for himself/herself, probably based on how the change affects him/her, personally.

Looking back over the many years of my practice; looking at where the law was when I started, and where it is now – I wonder. Have we made any progress at all? Or have we simply changed the law so that we could say that we brought “change” to the mix?

I remember a few years ago – 1978 to be exact – when I first started representing applicants to the US Patent Office. The government fee to file a patent application was $60. The first inventor to invent an invention was awarded the patent, even if his attorney was a bit slower than someone else’s attorney. So the inventor did not have to worry about attorney speed in selecting an attorney. The big question was quality of workmanship. The inventor was not penalized if he happened to choose an attorney who worked a bit slowly. The attorney was not pressured to compromise on the quality of his workmanship in order to be fast in order to avoid penalizing his client. Yes, we waited 2-3 years for our first Office Action, and maybe 4-5 years for a patent to issue. But unless we had a really short-lived product cycle for the product, that didn’t matter much because we knew we had 17 years of life to the patent, starting from the date the patent was granted.

Yes, the US Patent Office left our mail out in an open-topped dumpster in the rain for a few months. We didn’t have to be computer-smart to do our work, either at our office, or in the sacred halls of the US Patent Office. We were free to wander the halls of the Examining Group if we needed to, to find the person we needed to see.

Today, actually starting March 16, the life of the patent is 20 years (YEAH), but that 20 years starts on the day we file the application, not the date it grants (OOPS). Today, we are assured that we will have a first Office Action within 14 months, or that any miss of that timeliness will get us additional days on the end of the life of the patent. That sounds so good. But any need to re-file the application, meaning more time in examination, eats into that 20-year life of the patent (OOPS). And, oh yes, if we want to see an examiner, or a supervisor, at the US Patent Office, we need to make an appointment, we are escorted everywhere. In other words, the Patent Office is not a closed cocoon, with no hope of ever becoming a butterfly, and if we get a peek inside, it is such a controlled peek that we can’t even hope to really ever know what goes on behind those sacred walls.

Just yesterday, one of my clients was considering whether it is worth his effort and cost to file an improvement patent application on a legitimate invention because that application would be an extension of patent rights that go back to 2003 – realizing that 9 years of his 20-year life (starting in 2003 under the existing law, and the new law) are already gone, and the application has not even been filed yet.

We recently had a new client show up with a patent he wanted to enforce against an infringer. But we had to tell him that the 20-year term of the patent had already expired before the patent was granted by the US Patent Office. How could that have happened? 20 years of “examination” in the US Patent Office, while the 20-year term was running. We wondered – what was happening that it took 20 years for the US Patent Office to grant this patent?

We inquired inside the US Patent Office and discovered that the examiners, and their supervisor, had dragged their collective feet because everyone thought the inventor in this application was too hard to deal with, that they could not meet their own productivity goals with this application while working with the inventor.

You tell me. Where is the justice in the system when the US Patent Office is allowed to drag its collective feet because they don’t like the way the inventor is conducting himself, even though our investigation did not reveal anything he did that was not acceptable under the law and under all of the rules of the Patent Office?

So I ask again – is this new provision of the law a good thing? Certainly, it will affect different inventors, and their companies, in different ways. Hopefully, time will tell us that this is “progress”. I’m not so sure.

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