Fairness V. Efficiency - InformationWeek

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2/21/2006
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Fairness V. Efficiency

Reform measure would grant patent to first party to file, and not necessarily the one who first conceived the invention.

Being fair doesn't always make the best public policy.

It just seems fair that the government should award a patent to first person who thinks of an innovation. And, existing U.S. law protects that inventor.

But a provision in a bill before Congress would change that, granting patents to the parties that win the race to the Office of Patent and Trademark, regardless of whether they were the first to conceive of the innovation.

Nearly ever other country awards patents to the first party to file, and supporters of the proviso like the idea of U.S. patent statues harmonizing with the laws of other nations. Plus, a first-to-file provision would likely reduce costly legal battles in the Patent Office and courts over which party should have been awarded the patent. That would no longer be an issue, the timestamp will be the determiner.

The government doesn't have an opinion on the merit's of the provision, but Patents Commissioner John Doll says there will be less work for his office if the measure becomes law. "If it became first-to-file, we would no longer have a Board of Interferences that makes determination on propriety of inventions as to who was the first inventor," Doll says. "That would be less work for the Board of Interferences."

Several patent attorneys contend first-to-file is what's practiced in the United States because the first person to invent is usually the first to file, and that in the overwhelming majority of cases the Board of Interferences sides with the first to file. "You end up with the same justice being done either way," says Dave Kappos, IBM senior intellectual property counsel.

But changing to first-to-file will benefit bigger companies over small and independent inventors, who might not be able to immediately raise the money—usually at least $10,000—to begin the patent process. And opponents of first-to-file say it's unfair that the first person to originate the idea shouldn't benefit from the patent's potential lucrative earnings. "One of the things people talk about is harmonization; I like to focus on the harm part of the patent system between other countries," says Ronald Riley, president of the 12,500-member Professional Inventors Alliance USA.

Riley sees first-to-file fraught with problems, saying that Japan's patent office was flooded with patent applications that never been granted once it adopted the first-to-file approach decades ago. "The risk of waiting, and being blocked out, is just too great," he says. With first-to-file, he says, companies will flood the patent office with scores or hundreds of relatively minor patents around a core technology. These filings become "pseudo prior art"—supposed evidence for future patent applications that the inventor's idea is original. "They'll use those as bargaining chips, and even though any one of them doesn't necessarily have merit, the uncertainty created by the sum total of them gives those entities a significant leverage over the real innovator."

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