FIRST-TO-FILE PITCHED TO CONGRESS: Yesterday, Gerald Mossinghoff (former USPTO Commissioner) and Marshal Phelps (Microsoft's deputy general counsel for IP) provided written testimony to the U.S. Senate Judiciary IP Subcommittee, arguing that harmonizing America's patent system with laws in the rest of the world is a top priority. And in light of the fact that the U.S. is the only country that uses a "first to invent" system instead of "first to file," many of the institutional businesses claim this causes complications when adopting a global patent strategy.

The idea of switching the U.S. system to "first to file" received a conditional endorsement from a group of higher education associations, including the Association of American Universities (AAU).

"The harmonization and clarity brought by a first-inventor-to-file process would provide significant benefits to the U.S. patent system, as well as to universities," said University of Rochester Provost Charles Phelps, who spoke on behalf of the AAU, the American Council on Education, the Association of American Medical Colleges, and the Council on Governmental Relations. He said if the U.S. does make the switch, the university research community would want to retain several key aspects of the current legal system that gives researchers flexibility in how they can commercialize their discoveries.

Personally, I'm not sure if I'm completely sold on "first-to-file". There's no question that that it's easier logistically - either you filed first, or not - and it would be nice to be in-step with the rest of the world in this regard. And I don't buy the fact that small entities can't "react" as quickly as the large companies. In many cases, smaller companies are quicker to file core patents, and typically have less bureaucracy to stand in the way.

However, I think the practical effect of this on the PTO could be a potential nightmare. For one, first-to-file would almost certainly smother any existing improvements to patent quality. Also, it would be easy to see a "second flood" of patents by applicants over-compensating for the uncertainty of a new system, and filing scores of half-baked applications in the fear that, should they delay filing by just one day, someone else may patent the subject matter. If you thought the USPTO is currently overwhelmed, you haven't seen anything yet when first-to-file walks through the door . . .