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SPECIAL SUMMARY REPORT

THE GREAT DEBATE

FIRST-TO-INVENT vs. FIRST-TO-FILE

and the

INTERNATIONAL HARMONIZATION TREATY





TABLE OF CONTENTS

Home

Important
Instructions
for: Duplication,
Distribution, Use of
Information


Introduction

I.
Credits


II.
Foreword


III.
WSJ Article


IV.
Synopsis-Europe
Legislation


V.
Synopsis-U.S.
Legislation


VI.
Key Questions
#1 / #2 / #3 / #4
#5 / #6 / #7 / #8
#9 / #10 / #11 / #12 #13 / #14 / #15

VII.
Arguments & Rebuttals
At-A-Glance


VIII.
Closing Comments &
Recommendations


IX.
Notes



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  • IV. KEY QUESTIONS: #6

    HOW DOES THE U.S. "FIRST-TO-INVENT" PATENT SYSTEM WORK?

    Initially, people with new ideas naturally harbor an inborn fear that someone will capitalize on their unpatented ideas. However, once the U.S. patent system is understood, this pressure is relieved, and they realize that the "First-to-Invent" system fosters cooperation with specialists - not paranoia that someone will run to the patent office and file an application before they do.

    The inventor begins by keeping a logbook with detailed notes (following a specific process) on the idea or concept and tracks its development by documenting each improvement and having it witnessed and notarized.

    Once the inventor performs a patent search to verify that his idea hasn't already been patented, he can concentrate his time and available funds in working on the idea.

    By having non-disclosure confidentiality agreements signed, the inventor can contact and work with manufacturers, prototype makers, mold makers, engineers, designers, consultants, etc. without significant risks of losing his exclusive rights.

    Thus, in the U.S., an inventor with limited finances can research, develop, test, conduct market research, perfect his invention and obtain financing, and delay filing a patent application until such time as he is ready to license, sell or market it.

    According to Ron Westrum's essay "Motives for Inventing", "the aim of development is to turn the basic concept into a working prototype. This phase is often protracted, and is the phase where the '99% perspiration' Edison mentioned is expended. However, when it's over, the invention works."

    Westrum continues, "turning a prototype into a manufacturable product may be even more arduous than development, but is absolutely critical in commercial success. Whereas prototypes can be nurtured in the lab, products have to face the rigors of use by customer; requirements for reliability; maintainability and reparability are accordingly tighter."

    As long as the inventor diligently pursues the development of his invention to "reduce it to practice" without lapses of time, and keeps his logbook updated to prove he is the true inventor, he has the legal right to patent, even if someone else files for the patent before he does.

    When the patent is issued, it is an extremely valuable property right because it has been tried and tested, and quite simply it "works".

    The November 1991 "Inventor-Assistance Program News" newsletter quotes Albert P. Halluin, Esq. of Fliesler, Dubb, Meyer, & Lovejoy, San Francisco, as saying that "the patent doesn't put value into the product - the value of the product/process puts value into the product...The value of the patent is directly proportional to the value of the process it represents. Thus, the "naked" concept rarely has much value."

    With the above described process, the U.S. "First-to-Invent" system rewards the true "inventor", not the individual that wins the race to the patent office, and consequently rewards a well-researched, tested, and workable invention.

    As Danial Dawes - the Los Angeles-based patent attorney who wrote the patents for the Intel 8086/8087 family of chips which power the IBM PC- uniquely phrases it: "the First-to-Invent" system is fair and just, not an arbitrary one like the proposed "First-to-File".

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