Thursday, August 18, 2005

WHY FIRST TO FILE IS A DUMB IDEA: It appears that one benefit that came from the Apple-Microsoft nonsense is that people started asking questions on how the US patent world would look under a first-to-file regime. More specifically, people started getting nervous over the prospect of potentially losing patent protection over nothing more than being second in a "race to file" an application at the USPTO (in this post from Groklaw, the catchy call-to-arms "remember the iPod!" was coined).

iPod issues aside, there are a number of reasons to be skeptical of the benefits proposed by first-to-file. Actually, it would be more accurate to say "benefit" (singular), since only one basic advantage is provided for first-to-file: simplicity.

The basic idea under first-to-file is that you look at the filing date of a patent, then compares it to the filing date of other patents, or publication dates of other prior art and - voila! - you have determined whether you are an inventor or not. It certainly sounds simple. But with all simple things, there are always strings attached. And in this case, they are some pretty serious strings tied to first-to-file. With all the arguments in favor of first-to-file, I've noticed that the focus is overwhelmingly based in logistics, but there is little analysis on the equities of such a regime.

First let's start with the easy one - US should adopt first-to-file because everyone else is doing it. Is this really a reason? The rest of the world uses the metric system, yet I don't feel my life is less fulfilling as a result of sticking with the English system.

It's no secret that the goal of patent harmonization is to ultimately produce (in some distant future) a "world patent" where one can file a single application and potentially receive worldwide protection. It sounds good on paper, but no one has a blueprint on how such a system would be implemented or enforced. How will it be funded? How will issues between national offices be resolved? What about the courts? Will U.S. software companies be subject to cretinous anti-software provisions in foreign offices? These and many other questions need to be answered before inventors in the US will feel comfortable giving up one set of rights for another.

A second reason given for supporting first-to-file is that the first to invent rule is enormously complex, and generates substantial litigation and complexity. I suppose that's true, but it should be noted that "first-to-invent" in the traditional sense has more to do with Interferences than it does with overall patent protection (i.e. prior art). And the last statistic I saw (granted, this was back in 1999), only about 0.01% of all patents were subject to Interference proceedings. So, in that sense, I'm not buying this "substantial litigation" argument. And even in the context of prior art, this would certainly simplify the examination/litigation process, but is it fair to the inventor?

The worst thing about first-to-file is that it places an inventor's allegiance first and foremost to the Patent Office, instead of his/her business interests. Just because you patent something does not mean it will be of commercial importance to your company. Our current system recognizes that, and allows inventors to mull over an invention and it's application in the market to see whether or not it is worth patenting (it is worth noting that in this recent survey, when companies were asked "how many of your inventions generated sales/profits?" the answer "none" came up 42% and 55% respectively). Under a first-to-file system, your priorities will not be in evaluating your technology, but merely getting things on file at the USPTO (presumably in the form of a provisional application).

And as others have properly noted, sophisticated (read: big) companies keep close tabs on this stuff, and are often intimately involved in the crafting of the legislation. They will undoubtedly be prepared when/if the legislation hits, and will adjust their patent filing strategies accordingly from the start. However, woe be onto the company that is unable to quickly make the adjustment (remember, most small companies don't even have a patent department). A miss for someone like IBM or Microsoft will not be all that catastrophic - to them patents are like currency - but to an emerging company, it could spell disaster.

Another serious problem, which I haven't heard anything from the USPTO about, is patent quality. As far as I can tell, the USPTO has no apparent plan to deal with a first-to-file system, and is barely keeping its head above water with the filings they currently have. If another flood of patents wash over the USPTO after first-to-file, it is almost certain that the office will drown.

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