March 16, USPTO switches from 'first to invent' to 'first to file' (opens in new tab)

I think the issue that's concerning is that this increases the necessity to obtain a patent on any novel idea, lest someone else copy your idea, patent it, and then sue you for implementing your own idea. This means that now, every time you come up with some new idea, you need to spend all the time, money, and effort to patent it (and hope, in the process, that you don't come across an existing patent for that idea, since now your infringement of that patent will be willful with treble damages).

Especially in the software field, this causes all kinds of problems. As many people have pointed out, if you were to try and patent software that you create, you would have to file a patent for every few lines of code you write. With first-to-invent, I would expect (though I'm not a lawyer, and haven't studied this in depth, so I could very well be wrong) that you would be able to simply not bother patenting it, and then if sued, file a patent and use the first to invent rule to get your patent to override theirs.

Parallel invention by different parties should simply be a sign of unpatentability to begin with.

Although it triggers a frothing at the mouth sort of anger that it's now a race to file first, a more careful reading of it suggests that your patent should be denied if any evidence of your invention occurs before you file for it.

That is, one-click shopping cart type patents would be automatically invalid if any such thing already existed or this sort of mechanism was published or discussed by another party. Is this correct?

I think another important point is that it removes a lot of potentially expensive litigation and discovery on who was actually the "first to invent" from a patent case.

> worry not HNers who are against software patents

Well I guess those HNers among us who are against all patents will continue to worry then. ;)

This may have been true many years ago, but today the term of a patent in the US is (with some exceptions) 20 years from filing. (See, http://www.uspto.gov/web/offices/pac/mpep/s2701.html)

This is a series of non sequiturs. "First to file" does not dispense with the need to invent. The requirement to provide a best known mode of implementation that is tied to the claims of the patent is no different under this system than under "first to invent". The difference between the two schemes is limited entirely to cases where two parties both file for a patent on the same invention at the same time.

There's an evident misconception here, and it's clear where it comes from; we "moved" from "invent" to "file", which makes it sound like you don't have to "invent" anymore. But no, that's not what the change means.

(Obviously, first-to-file does nothing to eliminate the problem of the USPTO rubber stamping comically stupid patents.)

Good. Infrequent colliding patent applications are cheaper to resolve, and prior art challenges get stronger.

Bad, horrifically bad. An insider can find a trade secret, that may not even be recognized as a trade secret, and leak it to another company for patenting. The true inventor then gets their business shut down.

Another failure mode is that computer spies steal the IP via a software security flaw, then patent it as their own independent reinvention.

How does that work? I submit a patent, my neighbor copies my work and submits a patent, mine is automatically invalidated?

You would think that based on what? Nothing?

This is probably true, but remember that the single inventor has the option of publishing the invention rather than filing a patent application. The publication will then become prior art to any later filed patent application by another. The inventor may then file for a patent on the invention within a year of publication, but may have to overcome significant prior art that has arisen in intervening time (i.e., between publication and filing). For a number of reasons (that I'm not going into here) this may not be the best strategy in most, or possibly any, situations, but it does exist.

What are you seeing in the wikipedia article that is making you question it? I'm seeing a section dedicated to this subject http://en.wikipedia.org/w/index.php?title=First_to_file_and_... (there may be newer versions, but this version has been up since you made your comment)

First to invent can screw the first inventor too, because the very notion of "first inventor" is kind of fuzzy. Suppose this is the time sequence:

   I come up with an idea.
   You come up with the same idea.
   We separately work on implementing the idea.
   We encounter serious problems with making it work.
   You solve the problems and actually get the thing to work.
   I solve the problems and actually get the thing to work.

Which of us is the "actual first inventor"? I had the idea first. You solved the practical problems necessary to actually make it work first.

In the US under first to invent the way it works basically is that your invention date is the earliest date such that you were working on the invention on that date and you worked diligently on the invention from that date through filing the patent.

So, in my earlier example, if you and I both worked diligently from the time we conceived the idea to the time we solved the problems in making the thing work and both filed patents, I would win.

However, if the timeline was this:

   I come up with an idea.
   You come up with the same idea.
   We separately work on implementing the idea.
   We encounter serious problems with making it work.
   I take a few months off to work on unrelated things.
   I resume work on the invention.
   You solve the problems and actually get the thing to work.
   I solve the problems and actually get the thing to work.

You would have priority under first to invent now. Since you were working diligently from you date of conception, that is still your invention date. My invention date would now be the date I resumed working on the invention after my break.

First to file doesn't change prior art.

It's easy to imagine lots of horrid scenarios. In practice these are rare.

What's more common, and much more expensive, is patent "interference" cases.

The US patent system has imposed de facto bookkeeping requirements on inventors anyway. It's just that instead of being called a "patent", it's called "inventor's logbooks".

There's an analogy here between common law title and Torrens title systems. Yes, Torrens has stunning failure modes. But they are rare and easily repaired compared to having to hope somebody, somewhere, doesn't have a scrap of paper you didn't know about.

(IANAL, TINLA)

Who is the "actual inventor" for parallel inventions which is what this change concerns.

Text of the Copyright Clause: "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 first-to-file system merely states that the first inventor to file, out of a group of multiple simultaneous independent inventors, gets the patent.

So, for example: you have Inventor X and Paperpusher Y. X invents but delays filing for a patent. Y comes across X's invention, realizes it has not been patentend, and files the patent application immediately. Y cannot and will not ever get the patent, because Y cannot prove invention. If Y were to steal X's notes and other junk and try to use those to "prove" invention, Y would be committing fraud and would be subject to civil and criminal liabilities, including jailtime. X may still have the opportunity to file for the patent application, but it depends on whether other parties (i.e., Z) have independently made the same discovery during the period X did not file.

The patent still goes to an inventor under first to file. All that changes is how priority is determined when independent inventors are vying for the patent on the same invention.