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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: #7

    HOW DOES THE PROPOSED "FIRST-TO-FILE" PATENT SYSTEM WORK DIFFERENTLY THAN THE PRESENT U.S. SYSTEM?

    FIRST-TO-FILE:
    The object of the "First-to-File" is to get your patent ASAP. Irregardless of who the true inventor is, the individual or entity that files first will receive the patent.

    Therefore, someone with an idea who wants to file a patent ASAP in order to protect his idea, will file a patent application, no matter how sketchy and undeveloped the idea is, irregardless of whether it even works, if he can even afford to file a patent at this early stage.

    And because it is in such an embryonic stage, most like it will drastically change as it is improved, so in order to be properly protected, under this system, the inventor will have to apply for a patente to protect each improvement.

    In a just-released study (April, 1992) entitled "Business Intellectual Property Protection" by MO-SCI Corporation, Missouri, under contract to the U.S. Small Business Administration, a random sample of firms in the "Corporate Technology Directory" revealed that:

      "small enterprises have more problems with infringements of intellectual property, with the Freedom of Information Act, and in meeting patent costs -- particularly the fees of private patent attorneys.".
    Since small businesses already have difficulties meeting the costs of a single patente, with its enuiing attorney fees, maintenance fees, and infringements, how will this group be affected when the "first-to-file" compels them to file at least two, and anywhere from three to ten or more patents as the idea unfolds?

    Common sense dictates that only large corporations will be able to keep up with these exorbitant multiple patent, attorney andmaintenance fees for each idea.

    In fact, the change in the U.S. patent system will have minimal ramifications for these large corporations that already operate under a "de facto" first-to-file basis, since they routinely file quickly in the U.S. in order to get an early effective filing date in foreign countries where first-to-file is in force.

    PRIOR USER IGHTS:

    Under the "first-to-file" system, there is a provision which gives individuals who were using, making or selling the invention prior to the filing date of the first applicant, a limited right to continue using, making and selling it.

    This provision denies the exclusivity which is the heart and soul of the U.S. patent laws. The "prior user right" is little consolation to the true inventor whose idea may have easily been pirated under the "first-to-file" system. This provision inherently insures piracy and competition from the one who has the financial clout to file early and who is also able to establish a superior position in the marketplace.

    And if the true inventor happens to also be the first-to-file, he is automatically insured competition from other "prior users" who have been using, making or selling his idea, without ever having any legal recourse to stop them or collect licensing fees. Either way, it strips the incentive out of the patent process for all but the large financially established companies around the world.

    Since these large corporations are self-sufficient in that they ahve their own in-house research facilities, financing, experts, and patent attorneys standing by, ready to file a patent on each improvement, they ahve a built-in system to keep the idea in secrecy within their organization.

    This eliminates the large corporation's concerns about someone else taking their idea and filing first, or under the "prior user right" clause, that someone will see it and begin to use, make or sell the idea before the corporation files its patent, with no legal recourse by the corporation to stop them or collect licensing fees.

    Ned Conley states in his essay, "First-to-Invent - A Superior System for the United States": "Prior user rights refers to a sop dreamed up by proponents of FIrst-to-File and intended as solace for the first inventor who loses the race to the Patent and Trademark Office.

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