Posts Tagged ‘first-to-file’

Patent Reform – Solving Problems That Do Not Exist?

Thursday, 15 September, 2011 16:04 Written by Scott Nyman 2 Comments

Scott Nyman

 

A few months back, I wrote a series of articles outlining the provisions included in the Leahy-Smith America Invents Act, then called the Patent Reform Act of 2011. One topic that I covered extensively in the discussion was shifting from the outgoing first-to-invent system to the first-to-file system currently practiced by a majority of other countries.

In the articles, I expressed my view that, as a matter of policy, the first-to-file determination of priority favors big business over start-up companies and individual inventors. Since big businesses typically have big resources, a significant amount of which may be directed to its intellectual property departments, these large companies may quickly and easily file a large number of patents, hoping some of which may stick. Conversely, the little guys may have to raise capital just to cover the expense of securing their first patent.

In policy, the argument holds true. In practice, however, America’s outgoing first-to-invent system has effectively produced the same results as a first-to-file system. Under first-to-file, an inventor could initiate an interference proceeding to claim inventive priority over a previously filed patent application. However, in practice, interference proceedings are rare. As an example, just 51 interference proceedings were pending last month, many of which have been pending for over a year. Compare this with the nearly 500,000 patents filed in a given year, and the relevance of interference proceedings become negligible. (The USPTO has plenty of data regarding pending interference and patent proceedings here and here.) Additionally, interference proceedings are often decided in favor of the inventor that files first, producing the same result as if priority were determined solely on the filing date.

In an article written by Kirk Teska, published at IEEE Spectrum, the author presents a similar argument. Teska additionally compares patent decisions by the Courts, which effectively reformed the patent system, with the reform recently enacted by Congress.

At the end of the day, I still don’t see a huge impact resulting from the newly passed patent reform. I agree that the patent system is in need of a change, but I doubt we’ll see any substantial increase of efficiency for patent prosecution and examination due to the Leahy-Smith America Invents Act. However skeptical I may be, I would love to be proven wrong. But hey, at least the Patent Reform Act is creating jobs, right?

Urban Legends – Poor Man’s Patent

Thursday, 24 March, 2011 10:13 Written by Scott Nyman 4 Comments

By Scott Nyman

Recently, I had a potential client ask me how to acquire a “poor man’s patent.” The poor man’s patent is an urban legend, a myth, and and provides protection on par with its required investment. The theory behind the “poor man’s patent” is similar to that of the fabled “poor man’s copyright,” you place a document containing the intellectual property you want protected in an envelope and mail it to yourself. Sophisticated versions of this myth require that you use U.S. certified mail when “protecting your invention.” Seriously, I’m not making this up.

Had I been able to practice patent law by simply mailing documents to myself for people, via U.S.  certified mail to be safe, I could have skipped spending most of my twenties in school and accumulating a substantial amount of student loan debt.

Here is what the U.S. Copyright Office has to say on the related “poor man’s copyright.”

I’ve heard about a “poor man’s copyright.” What is it?

The practice of sending a copy of your own work to yourself is sometimes called a “poor man’s copyright.” There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration.

To prove that this myth is circulating, I found this eHow article, authored by “wineglass,” outlining the steps to acquire your own “poor man’s patent.” The original article can be found here. The following has been copied from the article*:

How to get a poor man’s patent and also how to get a better patent for cheap.

Difficulty: Moderately Easy

Things you’ll need: postcard, money, computer, product

1. First of all a poor man’s patent is simply, just a postcard you send through the United Postal Service. Just print a copy of the product you designed on it. Address the postcard to your self (sic). Once it comes back stamped by the postal service it is a “Poor Man’s Patent. Risk is the design going out, and maybe not returning. But it is the cheapest way.

2. A better way to get a patent is to go to Lulu.com. Download a picture of your product. Then make a calendar, T-shirt, coffee mug whatever they offer. You design what it is you want and printed on it copyrighted by your name and date. You pay for it. Then Lulu.com sends your design on the product you chose, this is a legitimate patent plus it is copyrighted and no one else can steal it. We spent $40.00 on ours. I am going back to school for Small Business Management. Then we will go public with our product.

3. It is fun and exciting that if it goes big with the economy, you can actually own your own business. Good luck in you adventures.

So then, what does a “poor man’s patent” get you? Besides a zero return on the spent postage, in theory it may provide you with a date stamp showing the date it passed through the U.S. Post Office. Unfortunately for people who buy into this myth, this does NOT equal a priority date for a patent. In fact, there is no patent!

If you’re looking to build evidence for proving a date of invention, in case the validity of your patent is ever challenged, keep good records of the invention process. Save emails regarding the design or invention process, keep engineering notebooks, and maintain records for parts or labor purchased relating to the design phase of your invention. Then, if someone claims they invented your patented product or method first, you will be well prepared to defend your patent. But, you first need a patent that could be challenged! And no, a date stamped postcard won’t do.

Furthermore, if the Patent Reform Act of 2011 passes, also known as the America Invents Act of 2011, first-to-invent won’t matter anyway. So make sure you pick a postcard with a pretty image, so you can salvage it as a refrigerator decoration if the Act passes, or even if it doesn’t. See my coverage of the Patent Reform Act of 2011 here and here.

So what should an inventor on a budget do if he or she wants to patent an invention, but doesn’t have the funds to take a five-figure risk on an invention that may not be marketable?

First, I suggest that you contact a patent attorney such as myself (Nyman@LegalTeamUSA.com), one of the other patent attorneys at Zies Widerman & Malek, or any other competent patent attorney. It is important that you find an attorney that you like and that can understand your invention.

Second, consider filing a provisional patent application. Although this route will not provide you any immediate patent protection, it will provide you with a “patent pending” status and one year of priority to convert your provisional application into a non-provisional application, which will be examined by the U.S. Patent and Trademark Office for patentability. With the provisional application filed, you can test to see if your invention will be marketable. If so, you may wish to convert your application right away. If not, then at least you’re not losing a big investment.

Just remember folks, not everything you read on the internet is true. Question the source of the information you receive. Heck, maybe I should write an eHow article on this…

* Tactical IP claims no rights to the copyrighted work located on eHow.com. The portion of the work provided herein has been included under fair use. All rights claimed by the original author, eHow.com, or any parent entity thereof, shall be retained by the same. Read more: How to get a Poor Man’s Patent | eHow.com http://www.ehow.com/how_5358538_poor-mans-patent.html#ixzz1HWSlHYAh

PATENT REFORM ACT OF 2011 – UPDATE – SENATE PASSES ACT

Thursday, 10 March, 2011 09:21 Written by Scott Nyman 4 Comments

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011, as part of a series of articles. As a refresher, Senate Bill 23 is currently making its way through Congress, with the hopes of reforming the way the U.S. examines, allows, and enforces patents. This bill was formerly known as the Patent Reform Act of 2011, and has since been renamed to the America Invents Act of 2011. For the sake of consistency, I will continue to refer to the bill as the Patent Reform Act of 2011 in these articles.

Apparently, someone flipped the "bipartisan switch."

Since I posted the last article in this series, the U.S. Senate passed the Patent Reform Act of 2011 by huge majority. This 95-5 Senate vote proved that legislators on both side of the aisle recognize how broken the U.S. patent system has become, and the Senate is committed to fix it. Either that or it shows that the lawmakers on both sides of the aisle have no idea how the U.S. patent system works, but they know some change is necessary . Either way, it’s progress… I guess. Next stop: The House of Representatives.

In passing the Patent Reform Act of 2011, the Senate included provisions that would reshape the U.S. patent system closer to a “first-to-file” system. I have covered this topic HERE and HERE. Also, the Senate has included measures to provide the USPTO with  more control over its fee-setting structure. Some benefits that this provision may bring could include the elimination of fee-diversion and the creation of a “micro-entity” fee structure.  The Senate also passed provisions regarding third-party challenges, limitations to parties that can bring claims for false marking, provisions regarding inventor oaths, and the removal of failure to disclose the best mode as a means to invalidate an issued patent.

Honestly, I expected a more traditional Senate debate.

Some of the aspects of the Patent Reform Act of 2011 mentioned above have not yet been discussed in this series. These aspects will be covered in future articles. Don’t worry, the bill now must make it through the House Judiciary Committee. This should provide plenty of time to cover the rest of the Patent Reform Act of 2011 in sufficient detail before it receives the final vote.

Zies Widerman & Malek Attorney Cited By U.S. Senate During Patent Reform Debate

Thursday, 03 March, 2011 01:14 Written by Mark Malek 1 Comment

By: Mark R. Malek

During one of my routine calls to the managing attorney of Zies Widerman & Malek DC Area Office (Gene Quinn) I found out something that gave me great pride.  It was funny, because I kind of had to pry it out of Gene.  He is not the type that will lead off a conversation with “guess what awesome thing happened to me today…”  We were having our typical discussion – going over some strategies for various clients.  At the end of our conversation about business, we turned to checking in on each other – how’s the family, what’s going on with you, etc.

Gene Quinn

At the end of that, he gave me the ol’ “by the way, did you read my article in IPWatchdog.com over the weekend?”  Of course I did.  Gene is one of the best sources of intellectual property news out there.  His article that published on Sunday was about the new patent reform bill that is currently before the senate.  As our readers know from the various articles posted by Scott Nyman, (see articles here, here, and here), patent reform is (again) on the move.  There is a real shot of it passing this time…unlike the several patent reform bills that we have seen in the past.

Senator Jon Kyl

Anyway, on Tuesday, March 1, 2011, during debate over the patent reform bill, from the floor of the U.S. Senate, Senator Jon Kyl (R-AZ) repeatedly referenced Gene’s article. Senator Kyl was largely reading from the article at points and explained that he wanted to submit the article into the record because it raised many good points about the patent reform bill.  To see Senator Kyl’s remarks about first to file are available here (starting at 1:38:31).

Big ups to Gene for being recognized by the U.S. Senate for putting such great content up on IPWatchdog.com.  I was lucky enough to have Gene as my intellectual property professor in law school, have been fortunate enough to have kept in touch with him over the years, and am thankful that he agreed to run our operation in the DC Area.  Keep reading for more news on patent reform.  Also, we would really like to have your thoughts on patent reform.

Patent Reform Act of 2011 – Part 2.5 – First to File Revisited

Wednesday, 02 March, 2011 10:41 Written by Scott Nyman 8 Comments

By Scott Nyman

During the past few articles, I have been discussing different aspects of the Patent Reform Act of 2011, as part of a series covering the Act. As a refresher, Senate Bill 23 is currently making its way through Congress, otherwise known as the Patent Reform Act of 2011, with the hopes of reforming the way the U.S. examines, allows, and enforces patents.

Last time, I covered the proposed transition to from the traditional U.S. “first-to-invent” system to a simpler “first-to-file” system, which is followed by Europe and the rest of the world. Today, I was planning on discussing the new provisions of the Patent Reform Act of 2011 related to damages. But, since there has been such a tremendous buzz circling the internet lately about the “first-to-(fill in the blank),” I feel that this topic deserves some additional discuss before I can file it away as “covered.”

Patrick Anderson, who runs another quality intellectual property blog GametimeIP.com, has noted in one of his articles, “changes to the treatment of inventors (such as ‘first to file‘ and changes to the inventor’s oath provisions) at a minimum send the wrong message to innovators, and potentially threaten to harm innovation and progress.” (source) Likewise, Gerry Elman of GEN Magazine commented, “without a transformation of the information technology supporting patent examiners, patent reform would be like rearranging the deck chairs on the Titanic.” (source)

A recent article posted at PatentlyO discusses the implications the Patent Reform Act of 2011 would have on obviousness (or inventive step, to the rest of the world). In this article, the author raises the issue that the contents of a previously filed, yet unpublished, application could be use to make an obvious-based rejection during prosecution by the USPTO, creating a “secret prior art”. In other words, the USPTO could find it obvious for an inventor to combine prior art references, which references are being withheld from him by the USPTO. Make sense? I do not think so either. The last time I tried to make sense out of the “you should know what we won’t tell you” line if thinking, I was in law school.

The article at PatentlyO also brings up an interesting point that the Patent Reform Act of 2011, as it currently stands, would actually cause the U.S. patent system to overshoot the harmonization of patent priority laws to that of the rest of the world, making the new U.S. law more prohibitive for inventors. As said best in the article, “under our current invention-date-focused system, some inventions are patentable in the US that would not be patentable in Europe and Japan. On the flip-side, once the bill is passed, there will be a new set of inventions that are patentable in Europe and Japan, but not patentable in the US.” (source)

As you can imagine, people haven’t been shy about voicing how they think the current U.S. patent system should be reformed without stripping the law of its inventor-focused roots. One of the best suggestions I’ve encountered was from Bruce Hayden, chairman of the intellectual property committee of the IEEE, a group comprised of electrical engineers such as myself. Mr. hayden suggested, “rather than pursuing questionable reforms in S.23, we urge [Congress] to turn instead to a bill that would command immediate and universal support—a bill that adequately funds the PTO and allows the agency to retain the fees that it collects,” said Hayden. (source)

I completely agree.

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