I remember an article about SpaceX where Musk said that they didn't file many patents, because then other countries essentially had free access to their inventions if they didn't honour patents (China was mentioned).
With this change in law, they may no longer have protection against a patent filed by someone else that they (SpaceX) invented first...simply because they were not the first to file.
This may bring about more innovation because it forces "sharing" of ideas. Even if that "sharing" is done to stop real sharing.
On the other hand, suppose that Company A describes the invention in detail (or in more formal terms, provides a disclosure) at a trade show, before a disclosure or a filing by the second company. In this case, Company A can get the patent even though it filed after Company B.
So my understanding they can put some information (but not their whole invention) and get recognized for the patent.
I honestly thinks that's for the better. Basically, you patent, tells everyone how it works, and have the rights.
The move your described, you don't tell anyone anything and still have the rights... And that means i may be investing a lot of work on something only you will be able to profit from because i didn't know you invented it.
Basically this stops people from having the cake and eating it too.
You don't still have the rights, others can independently invent it and you can't stop. You can only stop them if you file a patent. This is way worse.
>they may no longer have protection against a patent filed by someone else that they (SpaceX) invented first //
They only had a very limited protection before. First year of use, only shown in public in certified trade shows IIRC.
This is how patents work, they require publication to enrich the knowledge pool and the return for that publication is time-limited government granted monopoly.
If SpaceX can demonstrate prior use then no later filed patent can, if the law is correctly applied, prevent their continued working of that specific invention.
The point is to put pressure on inventors to file, that's one of the two major purposes of the patent system (the other being to ensure due compensation of inventors).
You are incorrect. Trade Secret laws and prior continuous use protect SpaceX very well if someone were to swoop in and patent a technology they use.
It wouldn't necessarily prevent a patent from being obtained, but it would protect SpaceX from being found in violation. I know this from first hand experience.
Disclaimer: I am a former software engineer turned patent attorney. However, I am not your lawyer, nor am I the lawyer of anyone who reads this. (Sorry, I have to say that)
Anyway, another thing that many people miss on the "first to file" issue is that it's the first INVENTOR to file. So, employee can't leave company, steal the invention, then file if employee was not the inventor.
The law really is only changing in the situation where two people invent the same thing, independently of one another. Under the current law, if both inventors file, only one is entitled to the patent - the inventor who actually invented it first (perhaps determined in an interference proceeding in the patent office or perhaps in court). Each inventor would try to prove the date of invention through documentation (keep those lab notebooks - or that git repo, or the old svn or cvs repo backed up!). Whoever successfully proves an earlier date of invention wins.
Under the new law, it's just who filed first. If two people file for the same invention, there will be a "derivation" proceeding in the patent office to determine whether one of the inventors "derived" his/her invention from another (ie, is that person actually the inventor).
The period to file was supposed to be important though in non-conflicting applications. It allowed, for example, potential applicants to seek investment in various ways without fear of a specified disclosure causing loss of priority. Do you know how much inventors availed themselves of that ability?
This career choice is not for everyone. It can be very stressful, but also very rewarding.
Although I do write software patents for some clients, my practice is more broad than that. I deal with patent, trademark, and copyright (intellectual property) issues, as well as contracts regarding software, books, art, and ip issues. I also handle litigation about all of those issues.
No. We are afraid that someone will read what we say and think that we represent them or are giving them legal advice. We have to be very careful about what we say we are doing and what we say we're not doing. If you go to your doctor and he says you need to have a mole removed, if you don't schedule an appointment to have the mole removed, it's your fault. With legal services, if I tell someone they need to file a patent or what not, if it's not really clear that I'm not doing it unless they engage me to, then they might have an argument that they thought I was taking that action.
So, on most legal blogs, you'll see something that says "I'm not the reader's lawyer."
I disagree it happens on "most" legal blogs, maybe legal blogs written by lawyers who don't understand the law. Show me one case where a lawyer has been successfully sued for "offering legal advice" through a public blog post or comment. There is no basis for these disclaimers and the practice just pollutes discussion.
Prior Use Right says that if a you have used a technology commercially for more than a year prior to the file date of a patent[1], or public disclosure thereof if your technology is a derivative of the that disclosure, you cannot be held in violation of the patent. This holds regardless of if you have publicly disclosed your use of this technology or not.
When you combine this with Trade Secret law you protect yourself from one of your employees taking your technology, starting a new company and patenting it (potentially coming in under the 1 year mark).
First-to-File only comes into play when multiple entities file for overlapping patents, it simply finds in favor of the first to file for a provisional patent. This avoids a mess of trying to determined who came up with the idea first, which was always a contest of who documented first.
[1] You could still be in violation and not know it as provisional patents are non publicly disclosed for 18 months, so in reality there is technically a 2.5 year window where you can't be absolutely sure someone else has filed.
Even if this were a better approach, all I see it doing is forcing an even bigger torrent of patents into a system already so overloaded that it hardly functions as it is.
How is the patent office going to manage the increase? It's not, the system is going to slow down even further.
This also increases the cost of innovation. If I have a business, invent something, and don't patent it - I'm screwed regardless of if I prove I created it three years prior to the filing. In other words, now you have to file patents for everything to protect your ass (because it's not good enough to be able to prove you invented it first X years ago), and that's a very expensive proposition, particularly for small companies. This encourages the patenting of every little detail possible, even more so than today. Because if you don't patent every little detail, now you will have no right to self defense on the basis that you were the original inventor - they can come after you for every rounded corner you failed to patent, so to speak.
This forces everybody into the patent game.
The rationalizations being offered up, such as that this will be good because it forces openness on innovation are not only wrong (all it actually does it make it easier to steal technology for countries that already don't respect foreign patents), but the negatives are going to far outweigh any supposed benefits.
In five years everybody here is going to be complaining about how they really botched this piece of legislation and how it created more problems than the old system. This will turn out to be an extraordinarily expensive and destructive change; it is not the right approach.
There are a lot of concerns about first to file, but I think they're overblown because they ignore the context in which "first to file" versus "first to invent" comes into play: when there are two simultaneous patent applications.
What the AIA does is two-fold:
1) It changes the rule from "first to invent" to "first to file" when two inventors simultaneously seek a patent for the same invention;
2) It expands the "prior user rights" defense so that if you've been using a technology commercially for a year before the patent filing, you're not liable for infringement.
So if you weren't going to patent something, and keeping it as a trade secret instead, it's not clear that under AIA you have a new incentive to go patent it. If you weren't going to patent it anyway, there wasn't going to be a "dueling applications" situation, and "first to file" wasn't going to come into play anyway. And if you disclosed the technology instead of keeping it secret, then prior art comes into play and AIA expands the cases in which prior art can be used to invalidate a patent.
I'd personally like to see a merging of the "prior user rights" and "prior art" defenses. It should be possible to invalidate a patent by showing that someone else was using the technology before the patent was filed, even if that other person didn't publish.
Of course, one way to achieve that effect under current rules is to publish instead of keeping technology secret. If the tech community is really opposed to patents, especially software patents, then it should take additional measures to publish exactly how all their technologies work. This is something Google, etc, can take the lead on without waiting for legislation. Establish a rich database of prior art that can be used to invalidate future patents.
I'd rather transition to a system where if two people try to file for the same thing within a few months or a year of each other, neither one gets it because it's probably pretty obvious.
What if both of them put real effort (money) into research and arrived at similar/same place? Should it be dismissed as well? Or is there something as joint patent?
I think in that case, the answer is "too bad, so sad". The patent system shouldn't guarantee some kind of monetary reward. If it does, it sets up the wrong incentives.
Independent invention should be a sign that the idea isn't worth patenting, that it was "in the air" at the time.
The comment to which I responded seemed to take the view that spending a bunch of money on discovering or inventing something should more-or-less be automatically rewarded with at least a portion of the "intellectual property" rights. That's the concept I wanted to rebut.
I don't have facts at hand, but I imagine that like any other thing (starting a business, writing a book, creating an App) 99.9% of patents result in no monetary gain whatsoever. But if we're going to go all in on the property aspects of patents, then I think that morally and ethically, we have to give an independent inventor a share of the property. Anything else just looks arbitrary, and leads to disrespect of patents, "intellectual property" and The Law in general.
If two people invented the same thing together (or, more commonly, one person invents feature A, and another invents feature B, where both feature A and feature B are part of one invention), then they are joint inventors (and without an assignment or an obligation to assign, they are both joint owners). On the other hand, if two people invent the same thing separately (e.g., similar research goals at two competing pharmaceutical companies), then the first to file gets the application.
It still must be an enabling disclosure, though. That is, it has to teach the public how to make and use the invention.
Well yeah, the rules would have to be a bit more complex than that, but do you not like the general idea?
Because I think a whole load of really obvious rubbish gets patented at the moment, but I do think the foundations of the patent system and the utility of patents ought to be salvaged.
You wouldn't know what your competitors are filing within months of it happening and then have any opportunity to do anything about it.
Applications are only published to the public either 18 months after the earliest priority date or after the patent has been granted.
The only other time you might know what they were up to is if they made a public disclosure about the technology. But as that has implications for their own filing strategy, they're not likely to do that in a way that left you an opportunity.
It's not always "that obvious", some ideas just make sense for the time, and there are some seriously low-grade patents filed which barely even qualify as invention anyway. I'd hate to be drawn into some BS politicking at the sake of concentrating on my technology. Look at Leibniz&Newton ... http://en.wikipedia.org/wiki/Leibniz%E2%80%93Newton_calculus...
I read the implication 'that obvious' by the OP as being obviously in cahoots or as obvious derivative works, rather than independent works along the same line of enquiry and execution.
Oh right, no. By 'obvious' I meant that if two people come up with the same thing independently then maybe the thing they came up with is comparatively not that special or innovative, and that perhaps if you have multiple folks in a field coming up with the same ideas then those ideas are not the ones deserving of protection.
--edit-- this would be because patents (in my mind) are the exchange of protection/exclusivity from the state in return for disclosure to the commons of an idea that might never otherwise become known or publicised.
If loads of folks are coming up with the same idea and racing to patent it, that points (to me) to a situation that patents aren't meant to address - giving exclusivity to someone based simply on them being first of many. If many can come up with it, then the deal is lopsided and the exclusivity shouldn't be granted. IMHO.
Yes, I think this is the operative point. If we as a society are going to make this deal -- we are giving the putative inventor an exclusive license to the technology for a substantial period of time in exchange for disclosure of how it works -- we want it to be a good trade. And it's only a good trade if the information in the patent is actually valuable. If there's evidence that that information would still become available in the absence of a patent grant, it becomes clearer that it's not a good trade in this particular case. Simultaneous filings are about as good a source of such evidence as one could hope for.
More broadly, I think the problems we have with the patent system can be seen as being rooted in the fact that there isn't anyone fully empowered to represent the public interest in this negotiation. The PTO is supposed to do this, in theory, but the examiners are overworked and have the wrong incentive structure.
And, there's a key problem: in a dispute over the obviousness of a claimed invention, the burden of proof is on the examiner to show that it's obvious -- which can be very difficult, particularly when the applicant can reply that anything seems obvious in hindsight. I propose that instead, the burden of proof should be on the applicant to provide objective evidence of nonobviousness.
Such evidence could take various forms: showing that others have tried and failed to solve the same problem; publication in a peer-reviewed journal or conference proceedings; showing that the need for a solution has been long and keenly felt.
> And it's only a good trade if the information in the patent is actually valuable.
Slightly different subject, but I think this the best argument for why software patents, at least in their current form, are bad.
With a useful patent system, the patent library should be a treasure trove of information. People with difficult problems to solve should be wandering through the archives to see what's out there. If the patent is still in force, the license fees should be well worth it, since it solves a hard problem!
Have you even heard of a programmer doing such a thing? I certainly haven't. In fact, the general advice I hear is the exact opposite: actively avoid looking at patents, because you're liable for more damages if you infringe willfully than if you do so by accident.
Oh, I thought he meant that the invention itself was obvious, i.e. unpatentable because anyone knowledgeable in the field in question would come up with that solution when presented with that problem. In theory, "obvious" inventions aren't patentable, although in practice the bar is set pretty low.
Just to clarify, since some people (not necessarily you) confuse this: first-to-file does not mean prior art doesn't count. If you publish something, it can stil be used to invalidate a patent or application.
First-to-file just means that if two people apply for a patent, there's no possibility for the second to challenge the first with an interference proceeding[1] to attempt to prove using non-published evidence that you actually invented first.
First to file actually reduces amount and cost of litigation. It removes the need to prove that you invented something 'first', which invariably involves a lot of wrangling over when an invention was 'invented' and at what point something could even be considered 'invented'. Those questions were deemed to be distracting and not particularly helpful to the patent process. First-to-file may actually be more helpful in prior art searches because it reduces incentives to 'sit' on an invention and wait out the market, and increases certainty.
The number of applications consisting of just ideas, that haven't been implemented, tested, or tried, is going to sky rocket. And who can afford to file so many patents? The "big" established guys. Things just got worse.
As mentioned elsewhere, this is narrower than it seems. It's a rule of decision for what happens if two parties file at the same time, claiming to have invented first. Before, they fight in court to see who invented first. Now, they just look at who filed first. It does not to anything about prior art. Inventing and disclosing first still bars future patents.
To my mind, "first to file" removes some of the moral basis of patents. That is, even if someone invented something first, whoever gets to the PTO first gets rewarded with ownership of the idea. We've taken away the reward that should be given to the First Inventor based on that sacred, difficult act of Creation.
There is no "moral basis" for patents: they're entirely a creation of positive law, which generates an artificial monopoly in an inherently non-rival good, for the explicit purpose of "promot[ing] the Progress of Science and useful Arts". No "sacred, difficult act of Creation" is recognized, nor has ever been recognized, as the source of patent law.
I happen to agree, but in Europe, that's not 100% true: artists have some "moral rights" as to how and when their work is exhibited.
Even in the USA, even though the legal underpinnings don't recognize a "moral basis", legislation for the last 30-odd years seems to lean towards an "ideas as property" basis. I realize I'm conflating patent with copyright here, but so does the idea of "Intellectual Property". Why else would we grant a nearly everlasting monopoly (via copyright, again) other than to reward a Sacred, Difficult Act of Creation?
> Why else would we grant a nearly everlasting monopoly (via copyright, again) other than to reward a Sacred, Difficult Act of Creation?
You seem determined to find a moral root for what seem entirely to be pragmatic objects of law, but I don't think one exists to be found. If I were to eschew cynicism in answering your question, I'd propose that the legislators behind copyright extensions believe them to be the most effective means of pursuing the purpose of both patent and copyright law defined in the constitution, which I quoted in my previous comment. If we were to admit cynicism into the conversation, I'm sure you could anticipate what my answer might be.
As it happens, I do not believe in a moral basis for copyright: independent invention ruins all "property" aspects of most creations, as does the way almost every "invention" comes about, which is by incremental advances on some one else's ideas or creations. Another way that ownership fails is that the "owner" can't really tell if his or her idea has been "stolen", and has to have the state enforce property-style rights.
What I'm pointing out is that at least in the USA, legislation since 1976 has moved away from the constitutional basis for copyright or patent, and towards an "ownership" basis. "Copying is theft" type slogans and commercials prove that wealthy entities in the USA are pushing ownership as a moral basis for "intellectual property". The fact that a "World Intellectual Property Organization" exists proves that for a lot of people, "ownership" is a good moral basis for "intellectual property".
I've even heard my 6-year-old daughter complain that one of her classmates 'stole' my daughter's idea for the format of a book report. Ownership, like the idea of a "just price" is just one of those illogical things built in to human nature.
Well, the slogans used by proponents of more restrictive copyright policies aren't themselves the basis of the law, and even if many people seem to be amenable to the notion of ideas as property, actual copyright and patent law still don't work that way.
I don't agree that ownership of ideas is something built into human nature; physical property as been with us from time immemorial, but the modern notion of copyright is only a scant few centuries old, having been established by positive law and not recognized under common law. The notion of "intellectual property" is even newer.
Perhaps your daughter is being influenced by the current milieu, and not expressing an intrinsic equivocation between copying and theft that originated within her own mind.
Whoever is an inventor and gets to the PTO first gets rewarded. The patent system is an exchange. Inventor teaches the public how to make and use his invention, and the government gives the inventor a limited right to exclude others from practicing the invention. The switch to "first to file" encourages early disclosure, rather than inventing something in secret and waiting to file, or waiting until the inventor's one year bar period was about to run, then filing. Under the new system, if it's valuable and likely that someone else is working on the same system, early filing will be encouraged.
Lawyers benefit. It'll be cheaper to extort. You don't have to be afraid that someone else comes and proves that he invented this first. Owning a patent becomes almost risk free goldmine.
Also more this will lead to more patents because you have to patent to avoid someone else patenting your stuff bit later and extorting money from you.
Also more patents means more cannon fodder for lawyers for use in future extortions.
I still think that the occurrence a of situation where multiple parties file for patents on essentially the same thing in a short period of time independently should be considered unassailable evidence of obviousness and consequently unpatentable subject matter.
Whatever happened to a "person having ordinary skill in the art"?
So if thousands of engineers independently worked for years trying to solve some important problem, and then finally a mere two of them come up with solutions around the same time that are similar, you'd say the solution is obvious?
That's a pretty weird way to define obvious. It is true that sometimes a term used in the law deviates a bit from the meaning of that term in ordinary English, but rarely as far as your definition of obvious does. In English, obvious means that it is easy to discover. It should be readily found by any reasonably competent person who looks.
Of course, then you get into a argument about proving independent invention. Given that applications for patents are published, it's hard convincingly show you weren't aware of another person's invention.
FWIW, I agree with the principle. There's a lot of obvious stuff that gets patented, particularly in software.
1. My gripes with our patent, and trademark system comes
down to fees.
2. I draft all my own patents(only 1), and found the process difficult, but doable. I also filed my own trademark.
3. I did have an issue with the filing fees. I contacted
the offices involved and complained about the fees. I felt
the fees might prevent many young inventors fron protecting
their invention, or trademark.
4. They told me their was some programs for low income
individuals, but I couldn't kind anything. The fees for
filing a patent should be based on what a person makes?
The patent office must get funding from somewhere. If the fees don't at least mostly cover their staffing and research needs then huge companies that file a lot become a huge financial burden on the taxpayer, and the taxpayer is then paying for a business advantage for these companies.
Obviously this sucks for the small inventor. I'm not sure how you get around it. The first X a year are free? But then the patents are always filed in individual names and then assigned to the company anyway, so I'm not sure that works.
While it's possible that too-low fees could hypothetically make the USPTO a drain on the federal balance sheet, it's currently a revenue source. [1]
And there's long been a separate (reduced) fee schedule for "small entities". And it's long been recognized those are still fairly high for situations like the lone-inventor, and such situations make up such a small slice of the USPTO's total revenue, that they certainly could be tweaked to be more accommodating without much net impact.
And because all that was well-known:
The AIA included giving the USPTO some fee-setting authority. And one of their first proposals was to further reduce some small-entity fees and to create a new micro-entity status with commensurately-lower fees.
So it's not only a problem that would be fairly easy to address, without much adverse impact, it's actually already being addressed. (Though not really in-effect until later this year).
[1] Much ink has been spilt over the fact that the USPTO brings in more than it takes from the federal balance sheet, yet their budget has been left so low that they're chronically short on resources and thus backlogged.
Disclaimer: I am a former software engineer, now a patent attorney. But, I am not your lawyer, nor am I the lawyer for anyone who reads this. (Sorry, I have to say that).
Anyway, the USPTO has had 50% lowered fees for "small entities" for some time now. The patent office will soon add a new "micro entity" classification (paying 75% of fees) that might help individuals without a lot of money. The total filing cost as a micro entity will be just over 300 bucks. That's pretty reasonable considering the work involved in examining a patent application.
Thanks! I do think they could lower fees for individuals,
but put a limit on the number of patents, or Trademarks
a person could file--maybe just one at the reduced fee?
Corporations and LLC's would not get the discount.
I don't think their would be a rush of individual inventors
overloading the department with frivilious, Nolo Press enabled patent requests.
Plus, if that became reality; they could drop the program.
If anyone reads this, avoid any patent service that advertises on t.v.. Research your patient before you
hire a attorney, or DIY.
My main gripe was with the Tradmark fees. I don't
remember the fee, but even if it was $300.00--that's still
too high--especially for a www.mywebsite567.whatever?
I personally think the larger the company, the higher the
fee. Didn't Apple try to patent rounded edges?
Patents are a necessary evil and a little bit addicting once you get your first taste. First to file simplifies a lot of the issues with prior art (ie the challenge of proving your idea was original), but I believe this system stifles small companies even further because of the costs associated with the patent system. We've made a decision to pursue key patents given how important some of these technologies are for our product, but I don't think that applies to most startups.
I'm confused by their example. How does this change the rules of public disclosure?
Before this law, public disclosures prevent the inventor from giving patents. In a conference I attended, the scientists were very careful to avoid publicly disclosing the details of their inventions for fear of removing their ability to file for a patent. But the brief blurb in the article mentions that if inventor A publically discloses their invention before inventor B files, then inventor A gets the patent.
Publicly disclosing an invention does not prevent a patent...it simply puts a deadline for filing (1 year under the old rules, not sure under the new rules) starting with the date of disclosure. Thus, the purpose of avoiding disclosure is to prevent giving yourself a deadline.
Out of curiosity, what kind of protection does the system offer against companies in certain markets patenting against potential innovations in these markets by inventors?
In theory, (normal) patents should only be granted when they describe an invention to the level of detail that someone versed in the art can replicate the invention after expiration.
This property is unfortunately not generally present in patents once patent lawyers are done broadening the scope of possible 'embodiments' and rendering the language unintelligible.
With this change in law, they may no longer have protection against a patent filed by someone else that they (SpaceX) invented first...simply because they were not the first to file.
This may bring about more innovation because it forces "sharing" of ideas. Even if that "sharing" is done to stop real sharing.