So, what’s the deal with first to file?

It may not be obvious what really happened to the patent system when “first to file” became the law of the land on March 15, 2013. It was something that, from where I sit, will dramatically help the federal government deal with its backlog, but mostly provide some greater degree of security for keeping large assignees from being harassed by small IP-accumulating “patent trolls.” As an example, consider Apple as a large assignee, and some fictitious company like “we did it first,sorta.” The imaginary company that I’ve just referred to, if it truly fits the cynical description of an IP holding company, is one that goes about seeking out applications which showed that somebody else had been working on something that Apple had managed to make work. The significance, of it not needing to be a patent, is that under A first to invent system, you could claim or you could challenge that apple’s patent was invalid. Essentially, and I mean this in a very figurative sense, that entity, a troll, could extort millions from a company, just in order to continue practicing what they invented.

The previous system, this to be accomplished in a number of places. The cheapest, most instructive, but also most devious place, was to learn of an existing application for a patent, and then file an application, with claims close enough to prompt what was called a “interference.” And interference was the process, within the patent office, for addressing who should receive a patents when more than one Apple Kent had claimed exactly the same thing, while both applications were simultaneously before an examiner.

So, if Apple had an application and with the patent office, and a troll somehow became aware of this, they could file an application, compose claims intentionally worded to duplicates what Apple was claiming, and then apple’s prosecution would come to a halt, and the entire debacle would go before the board of appeals and interferences. The Board of appeals and interferences and this is essentially an administrative Court, comprised of high-ranking examiners and other officials, whose sole administrative job was to decide these things in a discussion basis. This is opposed to a document coming before a single person, who could say ye or nay as to whether or not a patent should issue. It was a massively more frustrating process. One way to get around and interference, is for one of the applicants to withdraw his application. Or, if the if one applicant assigned his invention to the other applicant, because then, the patent office doesn’t have to worry if more than one application issues as a patent claiming the same invention, so long as the single patent holder has agreed to what is called a terminal disclaimer. I’ll just leave the terminal disclaimer term on the table for now.

So the net effect, is that there would be this slow and expensive hearing before the administration of the patent office, and it can be resolved by one applicant giving up, or selling his claimed invention to the other person. Maybe one of the applicants had a legit claim to having invented first. That’s the scenario that you want, because then, the patent office would legitimately be pausing the production line in order to decide which, between two distinct inventors, had actually provided disclosure of the claimed invention to the public brain trust first. Arguably, that’s the whole point of the patent system, to recognize people who conceived of a thing, and worked on it hard, in order to develop something that would further society, and then, in exchange for the promise of protection to practice that invention, the patent office would recognize and set a legal rights for just that one entity to practice. However, that’s not what was happening, apparently. What was typically happening, was the troll scenario that I described above, where the applicant was truly just trying to finagle go away money from the applicant that had literally legitimately invented and made the thing.

So, someone who got some inside information, and could at least create the appearance of Sunledge of some plausible basis for having conceived before another applicant, was being able to receive payments for nothing other than just harassing someone in the middle of their patent prosecution.

There are a number of factors that have caused such a backlog at the patent office, and arguably, interferences words the biggest one, but it was at least one that was hurting someone with a lot of money. The best way to change a law is to annoy someone with a lot of money.

Under the new first to file system, which was already the construct in every other patent office in the world, this is no longer possible. The forum for an interference, I hope was, at least in the case of interference proceedings, mere co-pendency. Essentially, if two applications were “pending” at the same time, then an interference can happen. If prosecutions were all private throughout their entire examination, then such harassment would be much more difficult, but the back log of filings had made the time to obtain a patent surprisingly long. Combine that with the fact that applications publish at 18 months from the priority date, and you arrive at the realization that all sorts of things would be filed before the patent office, and then be in the public eye, before a right would vest. Also, in the case of large assignees, improvements in claimed invention would happen all the time. It next sense, when you have an application pending, to file what is called a “continuation application” which includes the additional features on to piggyback onto an existing pending application. It’s far more expedient and reasonable for applications to stay at the “top of the docket” then to complete the prosecution, and then attempt to protect the modification. However, in order to keep an application in a position where continuations can be filed, the first prosecution has to remain open, because of the requirement that an application and its continuations be co pending. So the companies with probably the best IP, with good attorneys, we’re putting themselves in the situation where liars and cheats could have a long window of setting up a mechanism, within the patent office, to give them a hard time in exchange for lots of money.

So, if you make it purely a first to file system, meaning that the expectation of deserving a patent will now presume that you will file first, rather than invent first, is that nobody gets to take advantage of anybody else’s published work. If you could see it among the published applications, it was already too late. So trolls couldn’t expect to see something published, and then go screaming around the wingnut community for someone who had a slight basis for claiming that they invented the claimed invention at a point in history before the filing date of the published application.

Ergo, interferences were stomped out. How the corporations rejoiced!

There are lots of other places where there were opportunities to harass a more “legitimate” applicant. However, this is supposed to be a single wordpress post, and I probably put in entirely too much content so far. We’ll just leave it at the interference analysis.

So, what’s wrong with all of that? The system was fixed, and now the “real inventors” would no longer be the subject of extortion from the bad guys. I’ll tell you why don’t like it.

It hurts solo inventors. In order to effect other parts of patent filing, there is an obligation upon applicants to not go about practicing their invention in public. The reason for this, is that the patent offices deal that’s open to the public is that please take time out from your lives to think of good things, and tell us all about it. If you’re really the first, and the only way that you were going to tell us, the public, about it, was to receive a monopoly, then you can have it. So, if you’re already parading about in public reaping the benefits of your invention, it’s not fair to go to the patent office and say, “give me a patent now! otherwise, I’m not going to tell you!”

Hopefully, you notice that the public was already made aware of it, in this circumstance where someone has successfully made invented and is already reaping the benefits of their invention. However, the point of a patent is the ability to exclude other people from practicing, so if you decided to practice it in public, without applying for a patent, all you did was shout about it good ideas without any care as to protecting them. That’s not holding up your end of the bargain.

However, I take issue with that presumption being a rule in all circumstances. If you are a diligent solo inventor, it’s quite likely that your invention is something that you can reduce to practice, provided you have sufficient money. If you are a “common Man,” chances are that your money came from someone else, because that “someone else” would like to see the invention developed. The closer you were to something that could be practiced and sold for profit, the more likely you were to be able to acquire a sufficient amount of money to complete it. A good way to get closer to reducing the practice, was to use that invention the setting in which it would work. Sometimes that means practicing in public. However, sometimes that means just having it around in public. Let’s say you come up with a good idea, get it working poorly, and then give up on it, but still keep it around with you for some reason. It was possible that somebody would see it and say hey what about blank? And then that idea might form the basis of the distinction which gave you the opportunity to either get it closer to practice, or get it closer to something that was a variant of what you had been practicing in order to get towards a protectable invention. There were protections for this, such as a one year grace period from the time of filing, or offering for sale, but mostly, you could be working on it forever, so long as you could show that you conceived a very very long time ago, or at least before the date at which it became known by the public, and that you reduced it to practice. You could “swear behind” other references, so long as someone else had not claimed before you, or you hadn’t made an egregious disclosure to the public or sold your invention and then expected to get away with it.

so, the process of invention was tolerated to be something that would could go on for decades. I’m sure that there are lots of examples of where this happened. Technologies become cheaper, technologies that have long been conceived of but were not technically feasible until some later date are probably littered across the invention landscape.

However, with first to file, as soon as someone else files, that’s it. No swearing behind. I’m getting tired. No, I’ll get around to the very last point.

if you were a little guy, before first-to-file, you didn’t have to worry so much about other people spotting you in public practicing your invention. Now, it is dispositive. Big law firms will tell me, I’m sure, that the number of little guys who had to worry about that degree of attention, but who needed to practice it in the view of the public is very small. I imagine I’ll also tell me that those most of those little but legitimate entities will simply now be savvy enough to avoid those mistakes.

My problem with that is that it’s looking backward at at who was “legitimate.” People don’t know whether or not they’re legitimate inventor until they’ve been given signs from the universe that they weren’t wrong to think that they were first to do something. Is the nature of human beings to discover problems and try to fix them. When a human being knows of a solution they typically use that solution. When they don’t know if such a solution, they frequently conceive of a solution. When that conception has been reduced to practice, they have invented. That’s just from a strictly literal description of what inventing is. Such a person, is totally capable of writing it up and sending it into the federal government, and saying “I have solved the problem. I believe that I am first. Please give me a patent.”

None of that requires expertise. However, chances are, that if somebody has made and used and thinks that there is works to a degree that they think it has commercial success, that’s probably the point where someone else says “hey you should get a patent on that.” at this point, there is nothing “illegitimate” about that inventor or his enterprise. However, in the event that this person might otherwise receive a nasty surprise as to hidden not having been the very first person to do something, at least his regular use and development of a solution to a problem would not be held against him, at least for many cases. Now, arguably, the first person who said to him “hey you should get a patent on that! ” is literally capable of being the event that dictates his receiving a patent.

Admittedly, that last sentence is leaving out a lot of additional analysis, but I think that most people can get my point here. There are a lot of clever people who make and use improve society, but who have not submitted their invention to the attention of society. They just been using it in public, absentmindedly unaware of the fact that they were putting themselves in a position to be recognized as having created a track record of a reason for them not to have a patent.

The change, at least in those scenarios, strikes me as having cut the “common man” out of the picture for receiving the benefit of a patent. And the common man is the one who most needed a patents in order to realize the benefit of his invention.

Wow I still haven’t made it more explicit.

My initial response, and it’s not entirely tempered yet, is that first to file is not as good for the common man as first to invent was.

that was a lot to dictate. Time for breakfast.