SPECIAL SUMMARY REPORT
THE GREAT DEBATE
FIRST-TO-INVENT vs. FIRST-TO-FILE
INTERNATIONAL HARMONIZATION TREATY
Distribution, Use of
#5 / #6 / #7 / #8
#9 / #10 / #11 / #12 #13 / #14 / #15
Arguments & Rebuttals
Closing Comments &
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".
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.
#2: RECORD KEEPINGARGUMENT
#3: PRIOR USER RIGHTSARGUMENT
"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.
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 APPLICATIONARGUMENT
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".
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.
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.