Talk:First to file and first to invent

Duplicated in Prior art
This is explained again in Prior art. Someone should take care of it...
 * Done. Gronky (talk) 23:05, 17 June 2012 (UTC)

Contradiction
The given example, added by User:65.110.29.163 and wikified by me, reports a first-to-file case in the United States, while the United States has a first-to-invent system. I am not sure whether the example is wrongly interpreted or whether the U.S. had not a first-to-invent system back in 1876. --Edcolins 08:59, September 7, 2005 (UTC)
 * According to Alexander Graham Bell "Bell got the patent because of the doctrine used" and oversimplification and wrong. 68.39.174.238 01:25, 16 November 2005 (UTC)

Merge
As discussed at Talk:Patent I have merged first to invent and first to file, and arbitrarily put the resulting article here. I'm not convinced that this is the right place for it though, but cannot think of a suitable article name. Any ideas? I'm sure the article also needs substantial work. Kcordina Talk 08:34, 21 April 2006 (UTC)

errors in article
I rewrote this article to correct the numerous errors in the original article. I have also cited to the Manual of Patent Examining Procedure to support my statements (the original articled lacked any support whatsoever). The Example in the original article was also wrong and failed to properly apply U.S. law. The MPEP is not an authoritative source (like a treatise or Federal Circuit case), but it can be easily accessed by all (unlike many reported cases which require Westlaw or Lexis access).

The article says that 'constructive reduction to practice' should be distinguished from 'actual reduction to practice'. I'm not sure why. There is an implication that the latter is superior. I say it is different but equal. I don't see that the reference given supports the implication. Until some authority is given for the proposition, it should come out.

The article doesn't deal adequately with diligence. It implies you are either diligent or you're not. In practice, however, you may be diligent in fits and starts (or you may in fact be continuously diligent, but only be able in practice to prove diligence over part of the period in question). This is important, both in theory and practice. In interferences where the first to conceive and last to reduce to practice is not continuously diligent, his 'date of invention' will depend on his opponent's date of conception - because he has to prove diligence from before that date. The law does not (in general) provide an invention date, but a rule for determining who beats whom. And the rule is not transitive! You can (theoretically) get a situation where A beats B, B beats C, and C beats A.Twr57 (talk) 07:58, 21 April 2011 (UTC)

The example doesnt describe...
The example doesn't describe if Tweety is immune to a patent filed by Tom or Jerry. Is it the case that because Tweety didn't file for patent, she does not receive the patent, however because she conceived the idea earlier, no one can patent the idea? —Preceding unsigned comment added by 74.202.89.125 (talk) 17:41, 22 January 2009 (UTC)


 * Whether Tom or Jerry can get a patent depends on whether Tweety's work was published or not - if it was, they can't.Twr57 (talk) 07:34, 21 April 2011 (UTC)

I've added this to the end of the example:


 * However, if Tweety has published her idea before 2006, then this publication can a basis to rejecte or invalidate Tom or Jerry's patent.

If someone wants to add the detail of the dates before which Tweety's publication would have to take place, that'd be great. Gronky (talk) 15:05, 3 June 2012 (UTC)

US now has a first-to-file system - article is outdated
See http://topics.nytimes.com/top/news/science/topics/inventions_and_patents/index.html —Preceding unsigned comment added by 72.179.151.221 (talk) 01:52, 25 March 2011 (UTC)
 * Isn't this just a bill? --Edcolins (talk) 20:01, 25 March 2011 (UTC)

Yes. Passed Senate by 95 votes to 5 (with 87 votes specifically in favor of First-To File). How will it go in the House?Twr57 (talk) 07:31, 21 April 2011 (UTC)

It looks like it's passed the House but the bills are different enough that it needs to go into reconciliation before it can be given to the president. http://www.thestatecolumn.com/delaware/sen-chris-coons-urges-house-to-approve-compromise-on-patent-reform/ -- Colin Barrett (talk) 18:13, 7 July 2011 (UTC)

Canada
The sources provided for Canada do not seem to be balanced enough to meet our neutrality policy. See WP:NPOV. --Edcolins (talk) 19:56, 15 April 2011 (UTC)
 * In what way? Genuinely curious. The source seems to be a peer reviewed academic paper. -- Colin Barrett (talk) 18:17, 7 July 2011 (UTC)
 * I thought that one source was not sufficient to support this statement about the effects. I have removed the tag and corrected the quote, for now. Not sure the paper was peer reviewed. --Edcolins (talk) 18:35, 8 July 2011 (UTC)
 * Hmmm, you're right in that the site it was published on, SSRN, is a preprint site. It seems to also be available through the National Bureau of Economic Research, but it's tough to say how official that is. Maybe it should say "One study found", or something along those lines, to indicate that it's significant but perhaps not necessarily the consensus? --Colin Barrett (talk) 23:06, 8 July 2011 (UTC)
 * Good point. I have reworded the text accordingly. --Edcolins (talk) 12:48, 10 July 2011 (UTC)

... is not the U.S. — Preceding unsigned comment added by 80.223.147.182 (talk) 09:34, 30 September 2012 (UTC)
 * Canada is not the U.S... Alright. How is this statement relevant to the article? Please clarify. --Edcolins (talk) 18:57, 1 October 2012 (UTC)

Effect on prior art
Let's say A has an idea on January 1st, and B has the same idea on January 10th.

A works diligently on a patent application, which he files on January 20th.

Meanwhile, B wrote about her idea in a blog entry on January 11th.

Can A validly get a patent, or does B's publication of the idea constitute prior art?

(The question is for first-to-file, but if someone has an answer about first-to-invent or how this exposes a difference between them, that would be interesting too. This should be in the article.) Gronky (talk) 16:31, 3 June 2012 (UTC)

First Inventor to File distinction from First to File and First to Invent
As I understand it, first to file is not the same as first inventor to file. First to file systems, such as those used in the British Empire and others before most nations signed on to TRIPS, allowed the first entity (regardless of whether they were an inventor or not) to apply for patent rights. First inventor to file requires that the first filer also be an inventor. The US Constitution only allows Congress to grant a patent to an inventor, so the distinction is particularly relevant there. Thus, the reversion done by Edcolins makes the article factually incorrect. Accordingly, I have undone the revert by Edcolins. I'd be happy to discuss reverting it if anyone can show me that these two systems are in fact the same, or modifying to make what's there better.Univremonster (talk) 15:02, 9 July 2012 (UTC)
 * Thanks for discussing this on the talk page. A first-to-file system does not allow the first entity, regardless of whether they were an inventor or not, to apply for patent rights and to validly obtain a patent. All first-to-file systems that I know provide that the applicant must be the inventor or his/its successor in title. See for instance . That the applicant must initially be the inventor (as in the U.S.) and cannot be its successor in title is, in my opinion, a minor difference between the first-to-file system and the first-inventor-to-file system, not a major difference (because many U.S. patent applications are later assigned to companies anyway...). The "first-inventor-to-file" system is a specific type of first-to-file system IMHO, so that we could make the first a sub-section of the latter. --Edcolins (talk) 21:18, 9 July 2012 (UTC)
 * I disagree, a strict first-to-file system does allow the first entity to apply for patent rights and validly obtain a patent (for example, patent of importation - see James A. Falk, Originality or Novelty in Cases of Misappropriation of Ideas, 33 J. Pat. Off. Soc'y 888, 901 n. 60 (1951)(describing the British Empire practice of granting patents to anyone - inventor or not - who introduced new or "lost" art)). I don't believe you'll find a direct cite that states the first-inventor-to-file is a hybrid of first-to-file and first-to-invent, as it's somewhat inherent in the terminology. I'd be fine taking that section out if it is unnecessary. Here are some sources that support the difference between first-to-file and first-inventor-to-file: (1) David Kappos' speech regarding AIA in 2009 (transcript available at http://web.archive.org/web/20100410035850/http://www.uspto.gov/news/speeches/2009/2009nov5.jsp)("The new process isn’t a 'first to file' system, it’s the 'first inventor to file' system. So there is no risk of someone who learns about your invention being able to beat you to the patent office; because they’re not an inventor.  As you know, any filer has to sign an oath and declaration under penalty of criminal sanctions"); (2) Toni Tease, New Act Brings Procedural Changes to Patent Law in the United States, 37-FEB MTLAW 12 (Feb. 2012); (3) Tsusung Hsieh, An Overview of U.S. Patent Law's First-to-Invent System, 5 National Taiwan University Law Review 27 (2010) ("some advocates of first-to-file patent systems suggest not converting to a true first-to-file system, but rather to a 'first-inventor-to-file' system. In such a system, patent rights are granted to the first applicant to seek a patent, but only if that applicant is an inventor. By elevating inventor-filers above mere filers, first-inventor-to-file systems, like the U.S. first-to-invent system, assume that some entitlement naturally rests with the actual first inventor. Therefore, how the U.S. is going to modify its first-to-invent system has turned from a mere dichotomy to multiple-choice situation")(footnotes omitted).Univremonster (talk) 02:14, 10 July 2012 (UTC)

Now (as of Sept. 16, 2012), in my understanding, the assignee can be the applicant in a U.S. patent application (see Question IOD8 of http://www.uspto.gov/aia_implementation/faq.jsp ). Thus, I don't really see a justification for calling the U.S. first-to-file system a "hybrid" system... unless there are some subtle details of which I am not aware. --Edcolins (talk) 08:14, 15 September 2012 (UTC)

I give notice that I am intending (when time permits, and subject to any comments below) to rewrite the second paragraph, for two main reasons:

a) the use of the present tense is inappropriate, when 'first to invent' is now a historical system only (though it still applies to patent applications filed before the America Invents Act came in).

b) the analysis is superficial.  The former US system did not assign a 'date of invention' - rather it provided a rule for determining (in an interference) who beat whom. As has been pointed out, the rule was defective, in not being transitive:  that is to say, that it was possible, as between three parties A,B and C, for A to win against B, B to win against C and C to beat A.  Never actually happened (so far as I know!)...Twr57 (talk) 18:31, 13 November 2015 (UTC)

Grace Period contradictory or unclear
"The USPTO FITF system[3] affords early disclosers some "grace" time before they need to file a patent [...]

The concept of a "grace" period, under which early disclosure does not prevent someone from later filing and obtaining a patent must be distinguished here from the FTI system [...]

Both FTI and grace systems afforded the early discloser protection against later filers."

The first part says that, under the grace period concept, early disclosers get a grace period before they must file for a patent. This implies that they will be protected from others that file between the time that they disclose and the time that they file. The second part says that, under the grace period concept, disclosing an invention early 'does not prevent' someone [else? or the same person that disclosed the invention?] from later filing and obtaining a patent. If that someone refers to someone else the implication is that the early discloser receives no protection from others that file between the time that the early discloser disclosed and the time that he invented. The third part again contradicts the second part. This apparent contradiction or poor wording should be cleared up. — Preceding unsigned comment added by 23.240.94.97 (talk) 19:18, 28 May 2014 (UTC)
 * I think the word "someone" referred to the discloser. Is it clearer now? --Edcolins (talk) 20:11, 28 May 2014 (UTC)
 * That's better. Thank you. — Preceding unsigned comment added by 108.185.88.189 (talk • contribs)
 * You're welcome! --Edcolins (talk) 12:46, 29 May 2014 (UTC)

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