Alexander Poltorak, Ph.D. NAPP Annual Meeting July FIRST TO FILE vs. FIRST TO INVENT

Transcription

1 Alexander Poltorak, Ph.D. NAPP Annual Meeting July 2008 FIRST TO FILE vs. FIRST TO INVENT

2 Overview First to File vs. First to Invent Patent Regimes U.S. Constitution Quality of Invention Disclosure Effect on Small and Independent Inventors Effect on Universities Harmonization of Patent Law Conclusion 2

3 First to File vs. First to Invent First to Invent is Unique to the U.S. The rest of the world has First to File The Patent Reform Act of 2007 proposed a change from First to Invent to First to File 3

4 First to File vs. First to Invent Patent Regimes First to Invent ( F2I ) First to File ( F2F ) 4

5 Important Dates Date of Conception ( DC ) is when the inventor first conceived of the invention in its complete form. Date of Actual Reduction to Practice ( DARP ) is when the inventor built a working model or a prototype. Date of Constructive Reduction to Practice ( DCRP ) the Date of Filing ( DF ) is when the inventor filed a patent application. 5

6 First to Invent Patent Regime In the U.S., an inventor who diligently worked on reducing his invention to practice is entitled to the date of conception as the priority date, so long as that inventor did not abandon, suppress or conceal the invention. The first inventor to conceive of the invention is entitled to a patent. 6

7 Interference Hearing When two inventors file patent applications on the same invention, there may be an interference hearing before the BAI at the USPTO to determine: (a) (b) who conceived of the invention first, and whether the inventors have been diligent in reducing their inventions to practice. Out of 419,000 patent applications filed in 2006, only 100 or 0.02% were involved in interference proceedings. 7

8 First to File Patent Regime First to File system gives priority to the inventor who first files a patent application, regardless of the date of conception. 8

9 First to Invent: Pros and Cons Pros: Based on the U.S. Constitution; Rewards the first inventor. Cons: Cost and time of interference proceeding; Secret prior art. 9

10 First to File: Pros and Cons Pros: Contract theory of patent law: patent is a quid pro quo for public disclosure of the invention; Simplicity, no interference proceeding; No secret prior art. Cons: Reward the winner of the race to the Patent Office; May be unconstitutional. 10

11 U.S. Constitution The US Constitution. Article I, Section 8: The Congress shall have power To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. The Constitution grants Congress the power to secure exclusive rights, i.e. to grant patents to inventors, not winners of the race to the Patent Office. Copyright vests with its owner as soon as the creative idea is fixed in a tangible form, not when the copyright is registered. 11

12 Quality of Invention Disclosure Patentees in First to file countries lag far behind US patentees in patent disclosure breadth. US patents have significantly higher page count (indicating breadth of disclosure) and claim count (indicating breadth of protection) than patents originating from the countries with First to File regime. E. Archontopoulos et al, When small is beautiful: Measuring the evolution and consequences of the voluminosity of patent applications at the EPO, Information Economics And Policy, 19(2), pp , (June 2007). 12

13 Quality of Invention Disclosure Actual Reduction to Practice: F2I indirectly encourages actual reduction to practice by giving the inventor time to build a prototype before filing a patent application. This results in a better patent application and a fuller disclosure. Best Mode: building a prototype or otherwise further developing the invention allows the inventor to experiment with the best way to practice the invention, thus leading to a meaningful best mode disclosure. F2F system necessarily leads to a race to the patent office, which leads to half baked patent applications. 13

14 Effect on Small and Independent Inventors Grace Period is also unique to the U.S. Grace Period allows inventor to figure out a marketing plan and business model. F2I regime and a Grace Period are important to small and independent inventors. Under the F2F regime, large corporations will always beat a small inventor in the race to the Patent Office thus placing small inventors at a disadvantage. 14

15 Effect on Universities Publish or perish, patents are an afterthought. Universities need F2I and a grace period to allow time for filing patent applications. Changer from F2I to F2F may have the unintended consequence of a sharp decline in university patents, ultimately resulting in a decline of technology transfer revenues. 15

16 Harmonization of Patent Law Should we change from F2I to F2F to harmonize its patent laws with the rest of the world. But why? US was the first country to allow patents on software; business methods. Which standard will prevail ours, which is strong, or theirs, which is weak? 16

17 Conclusion Both systems have their pros and cons. There is no compelling reason to change from F2I to F2F. The change from F2I to F2F Will make patent disclosure weaker; Will put small inventors at a disadvantage; Will hurt universities; 17