Patent Office Seeking Comments On How To Implement A 'First To File' Regime Instead Of 'First To Invent'

from the help-them-not-muck-it-up dept

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community. Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis. While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

You may remember that last fall, there was an incredibly weak attempt at patent reform known as the America Invents Act. This was the result of a nearly seven-year-long fight over patent reform, with nearly every good idea from early proposals being watered down to completely useless, and a few bad ideas ramped up for good measure. Nothing in the AIA actually dealt with the problems of patent trolls or patent thickets. One of the ideas that survived the years-long culling was flipping the US patent system from a "first to invent" system to a "first to file" system. I've long argued that this is a very bad idea for a variety of reasons. First, it encourages inventors to file for lots of patents as early as possible to beat anyone else to the Patent Office, rather than making sure that the invention is actually worth patenting. It also seems to go against the basic principle of the patent system, if it's supposed to reward actual inventors. Finally, switching to a first to file certainly seems likely to favor large companies with big legal staffs that can focus on rushing out as many patent applications as possible. Smaller entities might be in trouble.To be fair, the arguments in favor of this switch are basically (1) everyone else does it (mostly true) and (2) proving who was first to invent is a total pain in the ass and can be slow and costly. Thus switching to a first to file system could save a lot of wasted time and money in the cases where there's a dispute. That may be true, but I'm not convinced it's areason.That said, it doesn't much matter what I think: it made it into the bill and is now the law. The US Patent Office is now seeking comment on how it should go about implementing this new rule. It's put out two requests. First, it wants to know how it should change the examination guidelines for patent examiners (pdf and embedded below) to take this new rule into account. Second, it wants comments on how it should amend the "rules of practice," regarding this change -- since the current rules are based on the old "first to invent" system.For those thinking of participating, this is not the place to argue why "first to file" is a bad system (or even why the patent system is broken). I imagine any such filings will be (correctly) deemed off-topic and discarded. However for those patent holders and patent lawyers (and scholars) for whom this change is a big deal, now might be the time to share some thoughts with the USPTO for how it can implement this change with as little damage as possible.

Filed Under: comments, first to file, first to invent, patents, uspto