November 11, 2009
Interferences and Dodo Birds
by Philip Zies
The dodo bird, last sighted 1662
As you probably already know, the first to invent is the one who has the right to a patent under current U.S. law. If you invent something and someone else has already filed a patent application in the U.S. for the same invention, the U.S. Patent and Trademark Office (USPTO) will conduct an interference proceeding to determine who invented first. Interferences can be beneficial to the first to invent because there is no presumption of validity in an interference proceeding, the first to invent can obtain the patent rights of the first to file if successful in the interference proceeding, and the threat of an interference can be used by the first to invent as a tool in negotiating a license with the first to file. Or, at least, that is how it is in the U.S. right now. There has been a lot of talk about the U.S. joining the rest of the world in giving the right to a patent to the first to file a patent application, regardless of who was first to invent. Some say that if Congress passes any patent reform legislation at all that the first-to-file will be a part of the legislation because it is the least controversial part of the present reform bill. In the past when patent reform appeared imminent, the USPTO delayed declaring an interference proceeding, sometimes for years. While interference delays don’t appear to be the norm now, the delays could reoccur if the patent reform dialogue heats up. So, before interferences go the way of the Dodo bird, if you feel it is important to establish who was the first to invent by way of an interference proceeding, do it now.
Board of Patent Appeals and Interferences
SIGN ON THE DOOR: Appeals Only (after 2010)?
If you are interested in finding out more, this article provides more detail.
November 10, 2009
The USPTO Embraces the Blogosphere, Lobbies for First-to-File
Kappos: “Hey Ted, can you show me how these here tubes work?”
The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.
In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog. In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.
The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention. The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in. The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention. The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.
Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.
