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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

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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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  • VII. ARGUMENTS AND REBUTTALS AT A GLANCE

    DEFINITIONS:
    The Argument is the rationale behind adopting the proposed "First-to-File" patent system change.

    The Rebuttal is a counter-statement in favor of keeping the traditional U.S. "First-to-Invent" system.


    #1: INTERFERENCES


    ARGUMENT
      The First-to-File will improve the U.S. patent system by eliminating the problem of "interferences". These interferences are extremely expensive and are a time-consuming ordeal for all parties concerned, averaging $25,000 and up.

      NOTE: In the U.S. there are times when two patents for the same invention are simultaneously being processed in the patent office. In these cases, the Patent and Trademark Office (PTO) has the duty to determine which of the two applicants was the original inventor. This is known as an "interference".
    REBUTTAL
      Interferences occur only in 1/10th percent of 1 percent of all patent filings! The "First-to-Invent" system has worked for the other 99+ percent of the patent applicants.

      According to Donald Banner, former U.S. Patent and Trademark Commissioner, there are a few cases that can be expensive, but most are disposed of with almost no expense. Many interference contestors, in fact, share their evidence to privately determine between themselves which one will get the patent - with the other party licensing the rights. Thus, many are resolved without ever going through the PTO.
    RECOMMENDATION:
      The percentage is so minuscule that this is really a moot point. However, there are many ways to resolve this dilemma without sacrificing the successful "First-to-Invent" system. This is only one recommendation: since the real problem is that the duty of determination is imposed on the PTO, in these rare instances, the PTO could issue the patent to the "first-who-files" the patent application, and allow the parties to challenge the patent in the court system, where it belongs.

    #2: RECORD KEEPING

    ARGUMENT
      The "First-to-File" system will eliminate the time-consuming and expensive record keeping required under the "First-to-Invent" to prove conception and diligence. Under the "First-to-File", the patent will be issued to the first who files, irregardless of whether he was the first inventor or not, therefore no records will be needed.
    REBUTTAL
      Records still need to be kept, not just for obvious bookkeeping, tax purposes and common sense research documentation, but in order to contest the "derivation" questions and to prove "prior user rights" that occur in the "first-to-file" system.
    RECOMMENDATION:
      This argument is irrelevant to the issue.

    #3: PRIOR USER RIGHTS

    ARGUMENT
      The "First-to-File" system is fair, unlike the "First-to-Invent" system in which a single monopoly (patent) is granted to the true inventor, and all other individuals who have also been working on the same invention, lose all the time, effort and money invested.

      "First-to-File" has a "prior user rights" clause which gives individuals who were using, making or selling the invention prior to the filing date of the first applicant entitled to the patent, a limited right to continue using, making and selling it.
    REBUTTAL
      This clause 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 easily have been pirated. This clause 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 form other "prior users" who have been using, making or selling his invention, without ever having legal recourse to stop them or collect fees and licensing arrangements. Either way, it strips the incentive out of the patent process for all but large financially established companies around the world.

    #4: WORLDWIDE GRACE PERIOD AND THE PROVISIONAL APPLICATION

    ARGUMENT
      These are two "concessions" out of three (with the "prior user right") that would be given to U.S. inventors under the proposed "First-to-File" system.

      This is a complex and very misleading issue. To begin with, it is vital to note that the current U.S. "grace period" has a completely different meaning and application than the first-to-file "worldwide grace period".
    REBUTTAL
      The rebuttal to #4 unfold as each of these terms is defined.

      U.S. GRACE PERIOD:
      In the United States, an unpatented inventor has a 1-year "grace period" to file a U.S. patent application once he publicly discloses (ie. publishes it in a magazine, displays it, sells it, etc.) his invention, in which case he can seek financing, contact potential customers, conduct market research and test it, and he is still protected under U.S. laws.

      However, by publicly disclosing it before he files a patent application, he is barred from ever obtaining a foreign patent.

      To qualify for foreign patents, the inventor just needs to make sure he doesn't publicly disclose the invention before he files his U.S. patent application, in which case he has a 1-year period from the date of his U.S. patent application to file any desired foreign patents.

      Due to the fact that foreign patents are extremely expensive and complicated, over 70% of U.S. patent applicants decide that they don't need foreign patents and only apply for the U.S. patent. For most, exploiting a potential market of 250 million individuals in the U.S. seems to be plenty.

      WORLDWIDE GRACE PERIOD:
      The combination of the "First-to-file" and the "worldwide grace period" makes the process of invention quite futile for all but the financially established.

      Where as with the U.S. version, once the inventor publicly discloses his invention (by publishing it in a magazine, selling it, or displaying it), he is barred from ever getting a foreign patent, with the "worldwide grace period", he would not be able to apply for a "provisional patent application and he will have a one-year period from the public disclosure to file the domestic and any foreign patents.

      Of course, with the "priority user rights" provision, anyone who sees or learns about the invention after the public disclosure can start using, making and selling it by qualifying for "prior user rights" and you can't stop them or collect any fees from them.

      PRIOR ART:
      There is another provision which states that if a third party anywhere in the world publicly discloses the same idea (for example publishes it in a magazine, etc.) even just one day before the inventor files for the patent, it is considered "prior art" and the inventor's patent rights will be destroyed unless he can prove that the publication of the invention was somehow derived from his own public disclosure.

      WORLDWIDE PRIOR ART:
      Currently in the United States, when a U.S. inventor applies for a patent, he searches through the existing U.S. patents to see if it's already been invented.

      But "Harmonization" opens up the boundaries to include the whole world to the point that if a patent is applied for anywhere in the world, the U.S. citizen later won't be able to patent it.

      This also means that companies could try to invalidate U.S. patents by initiating legal proceedings in different countries of the world, and make it absolutely impossible for a U.S. citizen of limited means to travel around the world to defend his patent.
    RECOMMENDATION:
      This argument is irrelevant to the issue.
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