Starting today, the USPTO is a "first to file" system

Starting today, the USPTO is a
One of the more troublesome aspects of patent law is worrying about if something that you want to patent may have existed before you filed the patent, but starting today, that will no longer be a worry, because from here on, the US is moving to a "first to file" system, rather than the old "first to invent" system, which was much more difficult to defend.

The change comes thanks to the Leahy-Smith America Invents Act (AIA), which is the patent reform bill that President Obama signed into law in September of 2011. It is the same bill which President Obama more recently said only goes "halfway" to the full reforms needed in the patent system. The major components of the bill go into effect today, meaning the patent application process should be streamlined, small businesses get a break on filing costs, and it means that the US is now a "first to file" system.

*Update* We were mistaken at first, "first to file" doesn't mean that prior art doesn't matter, because prior art specifically refers to publically available evidence that one company has precedence over another in a patent dispute. If there is no prior art to worry about, whomever has the first filed patent will have the legal upper hand. A "first to file" system is how the majority of patent systems are done around the world, and should cut down on legal fees related to patents by making cases more straightforward, and should help the USPTO work through the incredible backlog of patent applications it has. 

The bill also has provisions to attempt to curb patent trolls by stipulating that non-practicing entities (aka trolls) have to file one lawsuit per defendant, rather than filing one lawsuit with sometimes hundreds or thousands of defendants. The cost of that alone is expected to slow trolls.

source: The Next Web

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36 Comments

3. AFnerdTP unregistered

i thought we were trying to go the way of preventing patent trolls?? wouldn't this only encourage patent trolls to just patent whatever they can think of? help me out here, i'm NOT seeing a positive side to this...

5. MichaelHeller

Posts: 2734; Member since: May 26, 2011

Sorry, meant to add the bit about trolls. It's in there now. Trolling is discouraged. Not exactly sure how the system defends against patents filed simply to have the patent, and without intention of creating the product detailed. I'm doing more research.

13. roscuthiii

Posts: 2383; Member since: Jul 18, 2010

That's probably why it's only "halfway" to where the reform needs to be. I don't think the first-to-file system should have been enacted until they'd hammered out a whole system. Patents should flat out favor the innovator... first-to-file as this is just flat out favors the innovator with the most resources. I'm not sure I can abide by that caveat. So what if they trolls can only file suit against one defendant at a time, filing first is a sure lock to gain the patent. Less defense against it now. Which means they can steamroll one defendant and move on to the next. After all, they did this to streamline legal proceedings. So these year(s) long cases get cut to a few months. They succeeded only in speeding the pace patent trolls can prey upon their targets. It was one step forward, two steps back. Hmm... not sure I saw it in there (and I'm too lazy to scroll back up), but if it's limited to only one defendant at a time, is there any limit to how many patents can be named per suit? Seems like a troll going all out at filing patents can arm up to the teeth pretty quickly. If prior art is no longer a consideration, can one still defend against the validity of the patent? (And if that is the case, then doesn't that not help speed things along as intended then?) Final thought... are there any provisions for ensuring the clerks reviewing the patents are able to execute their jobs properly?

16. roscuthiii

Posts: 2383; Member since: Jul 18, 2010

Another issue... under the pressure to file first, or lose out altogether, what about the quality of research put into products, or properly vetting them with adequate testing? Won't that impact overall quality of the products? If Company A gets word that Company B's similar idea is near completion, won't Company A strike preemptively; just throw together what they can in order to get to the patent office first, then work out the kinks later? I'm foreseeing a lot more patents with the modifiers, "on a >insert medium here

24. Droid_X_Doug

Posts: 5993; Member since: Dec 22, 2010

There is no requirement to develop a working prototype as a condition of receiving a patent, if that is what you are asking. The principal impact of first to file is going to be a rush to slap together patent applications that cover some elements of what is to be patented, rather than everything that is needed for an invention to work. For example, if competitors to the Wrights had known most of the elements to controlled flight (pitch and yaw were pretty obvious), one of them could have filed an application that conceivably could have blocked the Wright brothers from filing a patent for the complete process that included roll. I predict a mess is going to result. In retrospect, this is more of a full employment opportunity program for patent attorneys.

25. Droid_X_Doug

Posts: 5993; Member since: Dec 22, 2010

Patent trolls typically aren't the original inventors. A patent troll is generally an entity that has purchased a patent that it believes it can enforce for a financial return. Under first to file, patent trolls won't enter the process until a patent has actually been issued. Even the requirement to file individual lawsuits, won't slow down a troll. Intellectual Ventures has plenty of cash to fund individual lawsuits.

29. remixfa

Posts: 14605; Member since: Dec 19, 2008

First to file is meaningless without some sort of prototype clause to back it up. Otherwise, I could simply draw 100 different diagrams for anything I can think of that I think might come down the pipe in a few years and go patent them. Now I own the future for pennies on the dollar.

36. rallyguy

Posts: 620; Member since: Mar 13, 2012

Everything Obama has done has been to help his buddies. Follow the money and you will see why these changes were made. His friend Al Gore is on the board of directors for Apple. Might be a coincidence, but it's definitely to help someone, and not just the averages person.

4. som

Posts: 768; Member since: Nov 10, 2009

First come first serve Patent Laws even an ideas without product now you own that patent. What is a Crazy Patent Laws.

10. weinerslav

Posts: 126; Member since: Jul 31, 2012

I'm affraid this will do more bad than good...

6. MartyK

Posts: 1043; Member since: Apr 11, 2012

Crap!...I need to get busy and file!!..... "Numbers" will be my first patent files...look out PA remove all numbers form your site or expect a C&D letter soon...hahaha

7. Taters

Posts: 6474; Member since: Jan 28, 2013

That is horrible. I thought Obama was supposed to help not hinder.

9. alouden unregistered

He's helping to hinder....

8. Aeires unregistered

Goes halfway? This is a step backwards, nothing more. We need to get back to the first to invent days.

15. Zero0

Posts: 592; Member since: Jul 05, 2012

WE HAVE A WINNER! Congress was given the authority to issue patents to protect innovation, not to protect idea-stealing copycats with loads of money to hire lawyers.

11. InspectorGadget80 unregistered

Would be better if we can stop talking bout apples bogus patent & patents in general

12. tedkord

Posts: 17344; Member since: Jun 17, 2009

What, they decided the patent system wasn't a big enough mess already? This is nothing more than the government abdicating its responsibility so it won't have to do the work involved with researching patents.

14. Zero0

Posts: 592; Member since: Jul 05, 2012

YES! This law is fantastic, and will solve all of the issues America faces. I've already called in a lawyer to help me write my first patent. The invention I'm patenting actually has a bit of prior art, but it is an exceedingly useful technology. It's for a method of retrieving diatomic oxygen from air and utilizing it for cellular respiration. I think people will love this technology.

17. roscuthiii

Posts: 2383; Member since: Jul 18, 2010

You done screwed up. I live a block away from the patent office. Guess who's gonna file first? Hmm, I guess offices located near patent offices now become prime real estate.

18. -box-

Posts: 3991; Member since: Jan 04, 2012

Too late, someone else just filed for that. You're out of luck now. Better luck next time ...(in theory)

19. babyk

Posts: 379; Member since: Nov 03, 2011

Lol good one

21. Zero0

Posts: 592; Member since: Jul 05, 2012

But what if I breathed first?! Oh wait. I forgot that that is irrelevant now.

20. Slammer

Posts: 1515; Member since: Jun 03, 2010

If the law is only half of what it should be, then maybe it should have been shot down. Without knowing the full spectrum of this law, I would hope a required time period should be in place to culminate the final product after the filing. Any info on whether this is the case? John B.

22. sprockkets

Posts: 1612; Member since: Jan 16, 2012

THIS ARTICLE IS ABSOLUTELY INCORRECT. PRIOR ART STILL MATTERS. Please read up on it instead of spreading mis information! http://en.wikipedia.org/wiki/First_to_file_and_first_to_invent

26. Droid_X_Doug

Posts: 5993; Member since: Dec 22, 2010

You missed the most important part of the Wiki article - potential unconstitutionality of FIrst-to-File: "Many legal scholars have commented that such a change would require a constitutional amendment." Lotsa litigation on the horizon.... Anyone with a kid who isn't sure what profession they should pursue - tell them to become a patent attorney.

35. sprockkets

Posts: 1612; Member since: Jan 16, 2012

That still doesn't change what I said - prior art still matters.

23. kanagadeepan

Posts: 1254; Member since: Jan 24, 2012

Bad becomes Worst... There is more harm than good in this new system... Good for lawyers only and NOT for consumers...

27. Mr..J

Posts: 17; Member since: Feb 01, 2013

Oh my god let me patent the circular shape of a tyre

28. dragonscourgex

Posts: 307; Member since: Jan 16, 2012

I am no expect in this area. But I don't see how this would help. I believe a person/company should be required to present a working prototype before it can be rewarded a patent. Also, I believe it should be a required that said person/company are actively using the patent to produce a service/product for the consumer. Not just sitting on a group of patents for the solo purpose to sue anyone that making something similar.

31. CrazzyTechGurl

Posts: 3; Member since: Mar 12, 2013

hit it on the head there!!

* Some comments have been hidden, because they don't meet the discussions rules.

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