State of Innovation

Patents and Innovation Economics

Senator Feinstein: First-Inventor-to-File a Ruse

According to Broadbandbreakfast.com, Senator Feinstein nailed it!

“I think this is really a battle between the small inventors beginning in the garage, like those who developed the Apple computer that was nowhere, and who, through the first-to-invent system, were able to create one of the greatest companies in the world,” Feinstein said. “America’s great strength is the cutting-edge of innovation. The first-to-invent system has served us well. If it is not broke, don’t fix it. I don’t really believe it is broke.”

Feinstein discussed the importance of the first-to-invent standard in the United States at length, as well as the importance of the associated “grace period” to independent inventors.

She said that the changes sought in the current legislation would make it much harder for inventors to prove that they were the first to come up with an idea.

“Another problem with the bill’s first to file system is the difficulty of proving that someone copied your invention,” she said.

“Currently, you as a first inventor can prove that you were first by presenting evidence that is in your control–your own records contemporaneously documenting the development of your invention,” she continued. “But to prove that somebody else’s patent application came from you under the bill, was “derived” from you, you would have to submit documents showing this copying. Only if there was a direct relationship between the two parties will the first inventor have such documents.

If there was only an indirect relationship, or an intermediary–for example, the first inventor described his invention at an angel investor presentation where he didn’t know the identities of many in attendance–the documents that would show “derivation”–copying–are not going to be in the first inventor’s possession; they would be in the second party’s possession. You would have to find out who they talked to, e-mailed with, et cetera to trace it back to your original disclosure. But the bill doesn’t provide for any discovery in these “derivation proceedings,” so the first inventor can’t prove their claim”

Feinstein also dismissed the arguments for a change in the system, noting that there are only 50 proceedings a year at the United States Patent and Trademark Office that dispute who created a new invention first.

That is a minuscule number considering that there are about 480,000 patent applications a year.

 

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March 4, 2011 - Posted by | Patents | , , , , , ,

1 Comment »

  1. […] It is spring break here so I had a little more time to poke around on the issues around patent reform, particularly the First-to-File/Weakened-Grace-Period (FTF/WGP) issue that I wrote about yesterday  I was surprised that both the Kauffman Foundation and AUTM are in favor of the reform so am wondering what I am missing.  I still believe that it is a mistake and agree with this letter from Senator Feinstein. […]

    Pingback by More on Patent Reform « Just Do the Experiment | March 16, 2011 | Reply


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