Who gets the patent?

First-to-File versus First-Inventor-to-File

In the US, an inventor's evidence of pre-filing conception, diligence, and reduction-to-practice can help win a priority contest against a competing inventor and can also negate would-be prior art. Around the world, the vast majority of other countries ignore pre-filing invention activity -- instead relying only on an inventors patent application filing date to establish priority. Colloquially, we call the US system a "first-to-invent" (FTI) while the non-US systems are referred to as "first-to-file" (FTF).
Yesterday's guest post discussed the potential legislative change to US patent law that would largely eliminate any consideration of pre-filing invention evidence. Interestingly, the authors refer to the potential new system as "first-inventor-to-file" (FITF) as a way to distinguish between our traditional FTI system and the European FTF system.
Although the guest authors here used the term as a way to distinguish, my experience is that the first-inventor-to-file (FITF) terminology is more frequently used as a propaganda tool by proponents of the new US legislation. By adding "inventor" to the name, proponents of the switch are hoping to sideline the FTI argument that a later inventor is not actually an inventor. Perhaps most notable on this front is PTO Director David Kappos. In a recent article directed to independent inventors, Kappos repeatedly referred to the benefits of the "first-inventor-to-file" system. In a recent speech, Director Kappos also distinguishes between FTF and FITF systems -- suggesting that a FTF system allows non-inventors to file patent applications.   
The new process isn’t a “first to file” system, it’s the “first inventor to file” system. So there is no risk of someone who learns about your invention being able to beat you to the patent office; because they’re not an inventor. As you know, any filer has to sign an oath and declaration under penalty of criminal sanctions.
Of course, there is no country in the world today that grants patents on stolen ideas. (Although some, including the US historically allowed what might be termed "patents of importation.")
Invention-Date-Focused vs. Filing-Date-Focused: I would argue that all of these naming systems are incorrect because they improperly focus attention on the priority contests between two inventors claiming rights over the same subject matter. Most priority issues arise in the context of putative prior art reference used in an obviousness analysis and the question is whether the invention date evidence can be used to negate the prior-art effect of the reference. In that context the FTI and FTF language do not really make sense. I would propose a switch in terminology to distinguish between systems that are filing-date-focused and those that are invention-date-focused.

Comments

DC says:
"Most priority issues arise in the context of putative prior art reference used in an obviousness analysis"
When reading Kappos blog responding to comments regarding the low number of applications affected, I was a bit put off by his sidestepping of of this issue. Also glossed over were problems using the 1 year grace period under the new regime.
I'm not so put off by the propaganda aspects of the term FITF. Noone who cares about the issue will be fooled, and I suspect that the general public simply doesn't care.

Posted by: Just Visiting | Dec 11, 2009 at 11:21 AM
I agree that Kappos is a liar in his remarks quoted. It does make one wonder why enemies of the American patent system have to resort to lying to advance their cause.
As Just Visiting said, Kappos's audience are the uniformed: Congress. His remarks are dangerous.

Posted by: Ned Heller | Dec 11, 2009 at 11:35 AM
Although the guest authors here used the term as a way to distinguish, my experience is that the first-inventor-to-file (FITF) terminology is more frequently used as a propaganda tool by proponents of the new US legislation.
Hmmm. I'm not sure that I'd call this "propaganda". It is a more accurate description than "first to file".
By adding "inventor" to the name, proponents of the switch are hoping to sideline the FTI argument that a later inventor is not actually an inventor.
That's a generous way of presenting the FTI argument. One of the FTI arguments is that "actual inventors" will lose their patent rights to people who "merely" happened to be faster or more proficient at putting together a decent application and filing it with the USPTO. But that scenario occurs under our present system as well. You snooze, you lose. And those less skilled with manipulating the legal system will always lose. That's the American way (and the way in most other parts of the world).
Invention-Date-Focused vs. Filing-Date-Focused
Our present system is very much "filing-date focused." It includes, unfortunately, a baroque set of rules that allow for late-filers to challenge earlier filers. Maybe call it "The Dog Ate My Homework" system versus the "Take Responsibility for Your Actions" system.

Posted by: Malcolm Mooney | Dec 11, 2009 at 12:34 PM
By adding "inventor" to the name, proponents of the switch are hoping to sideline the FTI argument that a later inventor is not actually an inventor.
To be clear, I think the FTI argument that is sidelined is the very silly one that Dennis alluded to, i.e., that thieves who file first will get the patent rights. What is wrong with sidelining that argument? I guess if nobody was making the argument it wouldn't be worth sidelining. But of course some of the patent teabaggers are making the argument because they'll say anything.
Posted by: Malcolm Mooney | Dec 11, 2009 at 12:40 PM
Get back to work examiner Mooney.
"But that scenario occurs under our present system as well. You snooze, you lose." -
Mooney showing once again that he is obviously NOT a patent attorney, as the point of being able to swear behind removes the "you snooze, you lose" argument.
D'oh!

Posted by: Noise above Law | Dec 11, 2009 at 01:05 PM
"the point of being able to swear behind removes the "you snooze, you lose" argument."
Hmm... Does "snoozing" qualify as due diligence?

Posted by: BigGuy | Dec 11, 2009 at 01:55 PM
"snoozing" in the sense of developing the invention rather than rushing off to file an application - definitely YES.

Posted by: Noise above Law | Dec 11, 2009 at 02:18 PM
Are the advocates of the "bill" advancing any argument as to why it would be better for the American inventor to move to a FTF or to a hybrid FTF system?
Big companies, in contrast, file abroad and, as a practical matter, are on a first to file system now. But is this an advantage to the American inventor or just an advantage to the big international filer to force everyone onto the same system they are now on?
Big companies want more certainty in the prior art they can reliably assert against third party patents. But is this an advantage to the American inventor or just an advantage to the big company?
Big companies want harmonization so they can have one set of rules worldwide. But how is this an advantage to the American inventor? Or is it just an advantage to the big company?
IBM has long been among the leaders in advocating harmonization, first to file, limitations on patent term, limitations on injunctions and damages, limitations on patentable subject matter, etc., etc., etc. But in so doing, are they advocating the disinterested best interests of the American inventor or just for the best interests of Big Blue?
You know the answer.
Any honest person knows what is going on here.

Posted by: Ned Heller | Dec 11, 2009 at 07:16 PM
You know the answer.
Any honest person knows what is going on here.
What's going on is that you appear to be insinuating that a switch to a first to file system is somehow going to "disadvantage" a small inventor relative to a big inventor but you are unable to state exactly what the disadvantage is.
I hope the "disadvantage" isn't simply that the switch will make it nearly impossible for the small inventor to "win" against the big company if he/she should fail to file his application on invention X before the big company files its application on invention X. Surely that isn't the "disadvantage" you are referring to, Ned. Or is it?

Posted by: Malcolm Mooney | Dec 11, 2009 at 07:24 PM
Re: "Of course, there is no country in the world today that grants patents on stolen ideas."
? My understanding was that most other countries do NOT have a "derivation system" [as FITF would provide] or other proper inventor designation contest proceeding conducted within their patent offices before issuance, and would require some kind of separate, difficult and rare court proceeding to prove the invention was "stolen"?
Also, do all other countries even require a signature on an declaration or oath of invention by all the inventors themselves? I think not.

Posted by: Paul F. Morgan | Dec 11, 2009 at 10:46 PM
It is quite astonishing to see how people in this country want to be "different" and never want to adopt what the rest of the world does just because the rest of the world does it:whether you choose FTF FTI or even FITF there are remedies against the guy "who stole an invention".And frankly Paul do you think that interference does not" require some kind of separate, difficult and rare (court) proceeding to prove the invention was "stolen"?(and incredibly expensive too!)
the first to file system has proven its efficiency worldwide and the sole and unique reason this FITF idea has been introduced is to satisfy those narrow minded guys who deny any change since the founding fathers era.the last "innovation" of that kind was the provisional application 50 years after the british abandonned it!and what was the reason?to get an earlier filing date!!FTF!!

Posted by: the dude | Dec 12, 2009 at 03:17 AM
All this stuff about "derivation". I'm from the ROW and I've come across it in the law reports only occasionally. So, why will it be such a plague, if and when USA goes to FtF? Is it that American inventors copy more promiscuously than inventors in other countries?

Posted by: MaxDrei | Dec 12, 2009 at 08:46 AM
"As you know, any filer has to sign an oath and declaration under penalty of criminal sanctions."
Has anybody _ever_ had "criminal sanctions" imposed for something they said on a patent application?
Seems like a dishonest statement to me.

Posted by: Bob J | Dec 12, 2009 at 12:25 PM
Malcolm, I think it is the other way around. Name me one compelling reason why it would be in the interest of the American inventor to switch to FTF?
There is an old saying, if ain't broke, don't fix it.

Posted by: Ned Heller | Dec 13, 2009 at 05:34 AM
Yes Dude et al, stolen inventions are rare, interferences alleging derrivation are difficult and expensive, and FITF is being proposed instead of FTF because FTF is strongly oppposed by those who misrepresent the realities of U.S. FTI and effective provisionals.
My quibble was with the statement that other countries do not GRANT patents on stolen inventions. They indeed can, but most provide POST issuance NON-PTO legal recourse, as contrasted to U.S. interferences.
P.S. Reasons for adopting provisional applications in the U.S. included pressure from [112-challenged] universities and small inventor organizations, plus U.S. pharmecutical and other companies wanting to get the same extra year of patent term that their foreign competitors were getting.

Posted by: Paul F. Morgan | Dec 13, 2009 at 10:32 AM
Re: "Name me one compelling reason why it would be in the interest of the American inventor to switch to FTF?"

Sure. With the present U.S. system, even if you file first, making a large new product development investment has a hidden financial-disaster risk. Namely, that someone else who filed LATER will file a flaky or inadequate 131 declaration and get a blocking patent, and/or get you into an expensive interference that will delay issuance, have a very good chance of causing no one to get an issued patent, and even have a chance to take away your claims and get claims dominating your own product.
Here's another one. With our present system, what you thought was a very valuable issued patent, on which you made major business plans, can be shot down in litigation or licensing negotiations on a SECRET prior invention date that you had no way of ever knowing about under 35 USC 102(g)(2), the FTI PRIOR ART statute and its case law. Even if the 102(g)(2) party had never filed any patent application, or filed after you did but had an prior actual reduction to practice without subsequent supression or concealment.
Posted by: Paul F. Morgan | Dec 13, 2009 at 10:58 AM
RonK Name me one compelling reason why it would be in the interest of the American inventor to switch to FTF?
Ditto on what Paul said. In addition, I think the USPTO's failed experiment over the last couple decades (or more) with serving the "interest of the American inventor" has accomplished very little except to create a class of arrogant, entitled, greedy, litigious sleazebags, and an ocean-load of junk patents.

Posted by: Malcolm Mooney | Dec 13, 2009 at 01:02 PM
Despite being a proponent of FTF (or FITF, if you like), I must point out that the risk of another party having has prior reduction to practice without concealment is likely to be novelty destroying, no matter what the system.
I can only speak for my own country (Australia), in which we have an FTF system with a one-year grace period, and a pre-grant opposition process before the PTO where entitlement disputes (including derivation) can be determined relatively cheaply. Some posters here would suggest that such a system must be disasterous to small inventors. On the contrary, it seems to work for them extremely well. Most of my clients fall into that category.
In fact, the most common problem is that using the grace period precludes patenting in Japan or Europe.

Posted by: interloper | Dec 13, 2009 at 08:05 PM
As Interloper has also identified Australia as having a grace period, the US would hardly be alone in having FTF + grace period.

Posted by: Lionel Hutz | Dec 14, 2009 at 05:21 AM
The US would most certainly not be alone if it were to adopt FtF with a grace period. Look anywhere in Asia.
Small entities in Australia might like to file in Europe nonetheless. Will anybody in Europe ever find out that they prior-published themselves in Asia? To knock out a European patent, you first need evidence. Have you ever tried to invalidate a European patent using evidence of prior use? Ever come across the expression "up to the hilt" for the evidence the petitioner needs to succeed?
FtF plus grace period was the norm in Germany till 1978. It works OK when those filing are overwhelmingly domestic filers. Then derivation disputes are played out on the national stage with national rules applying. It is when derivation disputes are globalised that the real fun for lawyers starts. On another thread, we see the recent globalisation of filing activity at the USPTO. It has been like that at the EPO since 1978.
Some people can envisage the consequences at the EPO of introducing a grace period. Horrendous and even more so if every country has a different grace period. No more harmonisation, but lots more complexity.
I wonder how long it will take for the penny to drop. For universities and small inventors who would rather not get pulled over the table by the big corporations, FtF with no grace period is their best chance, by far, of prevailing against the big battalions.

Posted by: MaxDrei | Dec 14, 2009 at 07:03 AM
Director Kappos states that there is no risk of someone who learns of your invention beating you the patent office because they’re not an inventor. This of course is another fairy tale. All off the valuable patents are actually stolen using a large variety of methods including these ones and the only way to change these dismal statistics is to implement new inventorship determination methods as I have proposed in my new legislation. Obviously the one year grace period must go in a first-to-file system. It’s an unreasonable fairy tale to believe that someone is going to start a project in their garage and expect to maintain secrecy indefinitely without filing first before beginning R&D. This is the only creditable way of expecting patent granting on either a garage project or an industrial product. Everything else is a patent theft granting. The only way a non-first filer claim should be granted is in the instance of espionage or accidental divulgement and in this instance, the initial disclosure document program needs to be reinstated. This filing should be allowed in hand writing and be required to be recorded or post marked within three days of each other in order to establish the inventorship dispute. Also, the cost should only be $65.00 and allowed to be used with the existing EFS system.
Posted by: Michael R. Thomas | Dec 14, 2009 at 10:01 AM
In my effort to create inventorship determination methods and recognize the potential failings of the present system, we must realize that the EFS is likely hacked and infiltrated both during transmission and in the files of the PTO. Therefore we must develop additional documenting methods including the actual inventor’s advancement of an original conception through improvement and expansion in order to prove intellectual domination as a method of inventorship determination through multiple documented improvements. The return of an initial disclosure system combined with allowing multiple entries during the one year provisional patent period will greatly improve the actual inventor’s odds of patent granting. Also a list of optional evidencing methods in the event of loss of integrity of the office through incorrect granting will ensure the correct inventor will still be found by allowing inventors, who have had three patents denied, the right to change systems to a “90 days notice of intention to file system” that allows a patent to be filed after the expiration of the time limit in a particular category of invention and receive an immediate inventorship determination through the lack of filing of the same invention by any other parties filing at that time.
Posted by: Michael R. Thomas www.inventingconsultantcreator.net | Dec 14, 2009 at 10:50 AM
Paul Morgan said: "Re: 'Name me one compelling reason why it would be in the interest of the American inventor to switch to FTF?'
Sure. With the present U.S. system, even if you file first, making a large new product development investment has a hidden financial-disaster risk. Namely, that someone else who filed LATER will file a flaky or inadequate 131 declaration and get a blocking patent, and/or get you into an expensive interference that will delay issuance, have a very good chance of causing no one to get an issued patent, and even have a chance to take away your claims and get claims dominating your own product. "
Paul, seems to me that in order for this to work the "investor" must wait at least 18 months from filing his application before there is certainty. Up until then, the relevant patent applications will not publish and he will not know whether he is, in fact, the first file. In contrast, the first inventor can proceed with some confidence long prior to filing is patent application because the later inventor cannot cut him off. While the the situation with first-to-file provides more certainty, that certainty requires a significant amount of delay.
One can have the same certainty in the first to invent system. All one has to do is publish the invention. One year later there is a statutory bar to later filers. At the end of 18 months from the statutory bar date, one can reliably determine whether there is any patent application filed during the one-year "grace period" that could potentially affect the "product."
In either case, there is a significant period of delay until the relevant patent applications are actually published. It just seems to me to be foolish to wait that long in order to make a decision on whether to launch a product. It seems to me that a first to invent system provides a much more reliable guarantee that this.
Paul Morgan said: "Here's another one. With our present system, what you thought was a very valuable issued patent, on which you made major business plans, can be shot down in litigation or licensing negotiations on a SECRET prior invention date that you had no way of ever knowing about under 35 USC 102(g)(2), the FTI PRIOR ART statute and its case law. Even if the 102(g)(2) party had never filed any patent application, or filed after you did but had an prior actual reduction to practice without subsequent supression or concealment."
Paul, as you know, in order for prior invention to be prior art, it must be made public in some fashion. Normally, the patent owner would know that somebody else had made public something which might render his patent invalid if his invention dates were earlier. If that somebody else actually filed a patent application, it would be wise of him to force the issue through an interference. Otherwise he would proceed with a cloud upon his title.
But here, just as with the prior example, the inventor can cut everybody else off through a one-year statutory bar by publishing his invention. Thus, the major difference between first-to-file and first-to-invent is the one-year grace period.
If we ourselves introduced a first-to-file system in combination with a grace period, don't we have the same time frame for certainty to kick in? Only one year after publication can we be certain that no one else has a prior or superior right. Thus in the proposed hybrid system, investors are actually no better off than under the current system from a certainty point of view, and on top of that lose all the certainty provided by a prior inventor system.

Posted by: Ned Heller | Dec 14, 2009 at 02:47 PM
Ned you are dead right. FtF + Grace is the second worst solution. Stay with what you've got.
Agreed, every inventor, and every investor, needs maximum access to information about the inventive activity of others, for maximum legal certainty.
Just one thing: if it is already next to impossible adequately to search patent publications, how the heck are you going adequately to search for all those non-patent disclosures?

Posted by: MaxDrei | Dec 14, 2009 at 03:32 PM
Actually, MaxDrei, searching is becoming better all the time due to sophistication of search engines and the internet. These search engines can search not only patents, but any public domain materials.

Posted by: Ned Heller | Dec 14, 2009 at 06:15 PM
Paul Morgan: “With our present [FTI] system, what you thought was a very valuable issued patent, on which you made major business plans, can be shot down in litigation or licensing negotiations on a SECRET prior invention date that you had no way of ever knowing about”
Paul, there are far less draconian methods than a whole switch to FTF to solve this uncertainty problem. One can simply amend Section 102 to require applicant’s declarations on the record of their invention date. This can even be published on the face of the patent. This is effectively what we do in first- use-in-commerce declarations in trademark applications. But you do not really believe that FTF proponents are pushing for it because they are interested in solving this uncertainty problem, do you? You just have to look at Brad & Justin’s figures showing the large fraction of scenarios where no patents are issued under FTF to understand the value of this system for large firms.
Posted by: Ron Katznelson | Dec 15, 2009 at 12:04 AM
I meant to say “there are far less drastic methods than a whole switch to FTF” - not draconian. A minority may consider the switch to FTF draconian. Most would consider it drastic.

Posted by: Ron Katznelson | Dec 15, 2009 at 02:42 AM