The USPTO Embraces the Blogosphere, Lobbies for First-to-File


Kappos: “Hey Ted, can you show me how these here tubes work?”

The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.

In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog.  In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.

The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention.  The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in.  The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention.  The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.

Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.

This post was originally published on The Tactical IP Blog.

4 Responses to The USPTO Embraces the Blogosphere, Lobbies for First-to-File

  1. TERRIBLE idea. Sure, the litigation might be expensive, but there’s a damn good reason for “first to invent” ruling the day.

  2. jfischer1975 says:

    Agreed.  I posted my opinion as a comment to his blog post.  Wonder if he’ll actually read it.  My guess is that he’s already in full-on policy commitment mode, i.e., no argument will sway him.

    Here’s what I wrote:

    Director Kappos,

    Your justification for moving to a first-to-file system is flawed.  Even if your statistics are accurate (a point that is clearly up for debate — see other comments, supra), the fact that interferences only come up in a very small number of cases is proof that the current system is working just fine.  It does not provide support for reform, as you have contended here.

    Complaints of pendancy problems are directed at the examiner corps, not the Board of Patent Appeals and Interferences.  You have missed a step in your argument — the one that connects a first-to-file change with an improvement in examination efficiency.

    The only logical reason for abandoning the first-to-invent system — one you fail to mention — is international harmonization.  However, even that argument is of little value.  The United States’ system is the global gold standard in patent protection.  Why would we want/need to emulate the rules of other nations that have failed to implement anything that works as well as our intellectual property protection schema?

  3. Vincent Clement says:

    Jficher1975: If by “global gold standard in patent protection” you mean “awarding overly broad patents on ideas”, then, sure it is the “gold standard”.

    Because we would rather reward NTP, a company that has no products and spends nothing on research and development, instead of RIM, a company that releases new products and spends a ton of money on R&D.

    Both “first to” systems are flawed in that ignore anyone working on a similar invention. If more than one party is working on, say, intermittent wipers or the telephone, then none of the parties should be granted patent protection.

  4. jfischer1975 says:

    Shifting to a first-to-file priority system will have no effect on so-called “patent trolls,” and I’m not really sure that patent trolls are always a bad thing.  They allow a small startup to capitalize on innovation, without the need for a multi-million dollar production and distribution pipeline.  This type of profit-for-information business model is key to our (the U.S.’s) economic development.  Forcing a company to prove that it is actually putting its patents to good use, i.e., licensing or producing a product, as a threshold to bringing infringement claims addresses the patent troll “problem” much better than overhauling our priority system.

    There is no prize for “working on” an invention.  Patents are awarded to the those who achieve innovation (called “reduction to practice” in the patent-ese).  In both the telephone and wiper examples that you point to, there were other bars that would have prevented those poor *cheated* souls from obtaining patent protection for their work.

    Our patent system is the best thing going.  No doubt.  Anecdotal crybaby stories of inventors who missed their shot don’t negative that fact.

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