As the Senate takes up the debate on S. 23, there is a lot of discussion on certain aspects of the bill. IPWatchdog has a long discussion of some of these issues.
First, it is imperative that the PTO’s funding situation be addressed. Sen. Tom Coburn (R-OK) is expected to propose an amendment to prohibit fee diversion and permit the PTO to keep all of the fees it collects from users each year. Given the desperate state of the US treasury, it is unclear whether Congress would really tie its hands to keep from raiding the PTO in the future.
Next, there is the discussion of the change from the current first-to-invent system to the new first-inventor-to-file system, along with the accompanying changes to the grace period.
First-to-File v. First-Inventor-to-File
Under the current first-to-invent system, if two (or more) applicants file patent applications that claim the same subject matter, the PTO can declare an interference proceeding. Either the examiner can suggest an interference or the applicant can copy one or more claims of a patent that issued within the last year or an application that published within the last year, provided he can make a prima facie showing of priority. The party that filed the application with the earlier filing date is the senior party, while the party that filed the application with the later filing date is the junior party.
To win an interference proceeding and be entitled to a patent on the invention, the junior party must be able to demonstrate conception of the invention prior to the senior party’s filing date, and then either actual reduction to practice prior to that date or diligence in reducing the invention to practice from a date prior to the senior party’s filing date. The junior party has the burden of proof and requires evidence to make the proof.
The theory behind a first-to-invent system is that smaller entities such as independent inventors and small companies including start-ups cannot get to the PTO as quickly as large corporations that file numerous patent applications each year. Thus, the smaller inventors can still acquire patents for inventions that they conceived first through the interference proceeding.
The realty is that junior parties prevail in a very small percentage of interference proceedings; the proof required to ante-date the senior party’s invention date is simply too great. Many junior parties do not even understand how to keep proper records of conception for admission into such proceedings. Further, interference proceedings are usually like mini-trials in the PTO that require discovery, motion practice, and testimony. Such proceedings are costly and time-consuming. Few small inventors can afford to pursue these matters. This has led to the argument that we currently have a de facto first-to-file system now.
Under a pure first-to-file system, there is a race to the Patent Office. The first filer is the winner period. Under the proposed first-inventor-to-file system, by constrast, there is still the chance for a junior filer to win the patent rights. He would need to win a new “derivation proceeding” to prove that the senior filer “derived”–in effect stole–the invention from the junior filer.
Now, perhaps if the inventor has left the company where the invention took place and took the invention with him, the junior party could prevail in such a proceeding, but in most cases it would seem that evidence of such theft would be difficult or impossible to obtain. Thus, it seems logical to assume that junior parties will prevail in derivation proceedings with even less frequency than in interference proceedings. Perhaps this change puts us even closer to the de facto first-to-invent system.
Under current law, you take the application’s filing date and look back one year. During that time, it is almost irrelevant what the inventor did to disclose his invention. To put it another way, once an inventor publicly discloses his invention or sells it or offers it for sale, he has one year to file a US patent application. This should not change under the amendments proposed in S. 23.
Under current law, § 102(b) of the Patent Act provides that patents and printed publications are always available as prior art if they were published more than one year before the application date. Under § 102(a) and (e), patents, published applications, and knowledge or use by others within this country are prior art provided they are dated before the invention date of the invention, which is initially presumed to be the application date. These provisions apply to prior art dated less than one year from the application date.
If an examiner rejects a patent claim under § 102(a) or (e), the applicant is given the opportunity to ante-date the prior art or show that the invention date is before the date of the prior art. This is typically done by filing an affidavit signed by the inventor with evidence of such prior invention. Unlike in interference proceedings, these affidavits are not often questioned by the examiner, so if the inventor kept invention records while he was inventing, he can really ante-date most references within a year of his application filing date.
This part of the grace period would be eliminated by S.23. New § 102(b) would only exclude prior art within one year of the filing date if it is a disclosure of the inventor or one who obtained the subject matter directly or indirectly from the inventor. This provision is not exactly clear, but it appears to seriously limit the ability to swear behind prior art that is not the inventor’s own disclosure.
This will expand the amount of prior art available to examiners during prosecution, such as to make obviousness rejections. It again expands secret prior art, that is patents and patent applications that are not published until after an application’s filing date but were filed earlier.
I have long advocated that inventors file their patent applications sooner in the process rather than later. Although unclear, this must be Congress’ intent, to get applicants to file sooner. Under S. 23, it is even more imperative to get the application on file, both to keep the prior art pool a bit smaller and because it will be difficult or impossible to prove that another party “derived” the invention from you.